Appeal No. 1996-3623
Application No. 08/114,546
antedate the primary reference to Beckman applied against claims 1-32. The Examiner
relies upon a filing date of April 23, 1993 for availability of this reference under 35 U.S.C. §
102(e) yet the Examiner indicated that the rejections were maintained. Appellants have
not disputed the availability of Beckman as prior art.
Upon return of the application, the Examiner should review the merits of the
rejections under 35 U.S.C. § 103 and clarify the position as to why each claim included
in the rejection is unpatentable under this section of the statute and state whether Beckman
is prior art.
We do not remand this case lightly. We understand that this application has been
pending in the Patent and Trademark Office and at this Board for a relatively long length of
time. However, the consideration of the evidence of date of invention with respect to the
Beckman patent must be addressed prior to any determination by the Board. We
emphasize that we have not taken a position on the merits of the matter under 35 U.S.C. §
103.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-32 under 35 U.S.C. §
112 is reversed and application is remanded to the Examiner to reconsider the decision of
the Examiner to maintain the rejection of claims 1-32 under 35 U.S.C. § 103
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