Appeal No. 1996-2086
Application 08/255,588
which he provides. By reflecting on the breadth of the independent claims and the
teachings of all the relevant prior art, we believe that the examiner will be in a better
position to determine the patentability of the dependent claims.
Response to Dissent
For the reasons set forth above, we disagree with the dissent that claim 1 is
anticipated by the teachings of Fuller. Thus, it follows that we do not agree that, without a
fact-based explanation from the examiner, said patent would have rendered the claimed
subject matter obvious under the doctrine that anticipation is the epitome of obviousness.
In re Skoner, 517, F.2d 947, 950, 186 USPQ 80, 83 (CCPA 1975); In re Pearson, 494
F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
As pointed out in our Decision, we reversed the obviousness rejection due to the
lack of any factual findings by the examiner with respect to independent claims 1, 8, and
10, and not because of any deficiencies in the applied prior art. In circumstances such as
this, this Board has two options: (1) remand the case to the examiner to provide an
explanation as to why the claimed invention would have been obvious to one of ordinary
skill in the art in view of the applied prior art, or knowedge generally available in the art
(M.P.E.P. § 706.02(j)), or (2) make our own findings of fact and legal conclusions and,
thus, set forth a new ground of rejection (37 C.F.R. § 1.196(b)). We chose the former
alternative. In our view, the dissent has not affirmed the rejection set forth by the examiner.
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