Appeal No. 97-1754
Application 08/462,133
not become obvious, but rather the claim becomes indefinite.
In re Wilson, supra. Accordingly, we are constrained to
reverse the examiner’s rejection of claim 3 under 35 U.S.C. §
103 on procedural grounds. We hasten to add that this
reversal is not based upon any evaluation of the merits of the
rejection. We take no position as to the pertinence of the
prior art as applied by the examiner against claim 3.
The 35 U.S.C. § 112, Second Paragraph, Rejection
We agree with the examiner’s bottom line determination
that claims 2 and 3 do not comply with the second paragraph of
35 U.S.C. § 112. However, our reasons for so concluding
differ substantially from those expressed by the examiner in
the answer. Accordingly, we will affirm the decision of the
examiner rejecting claims 2 and 3 under 35 U.S.C. § 112,
second paragraph, but because of the altered thrust of our
rationale in so doing, we will denominate said affirmance a
new ground of rejection pursuant to our authority under 37 CFR
§ 1.196(b) in order to allow appellants a fair opportunity to
response thereto.
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007