Appeal No. 97-2523
Application 08/337,823
A reversal of the rejection on appeal should not
be construed as an affirmative indication that the
appellants’ claims are patentable over prior art.
We address only the positions and rationale as set
forth by the examiner and on which the examiner’s
rejection of the claims on appeal is based.
According to the appellants, the above-quoted statement
(1) is a statement “as to” the patentability of
claims 7-9 and 11-15 over prior art, (2) is
“unwarranted” unless a new ground of rejection is
made, and (3) “unreasonably places a cloud on any
patent that should issue.” The appellant requests
that the statement be “expunged” from our decision.
The request is denied.
The appellants’ views regarding our statement are without
merit. By its nature, a decision on appeal from the
examiner’s rejection and reversing the examiner’s rejection is
not a general indication or expression of patentability, but a
pronouncement of the lack of merit of the examiner’s stated
rationale or reasoning for rejecting the claims on appeal.
The Board is not charged with the duty to re-examine the
appellants’ claims afresh, or ab initio. That fact is
unchanged by the authority of the Board to enter new grounds
of rejection.
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