Appeal No. 1996-3860
Application 08/312,819
Discussion
In proceedings before the PTO, the examiner has the burden of establishing the
prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); citing In re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990), In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984) and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
See also In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The examiner’s position has been difficult to review since the Examiner’s Answer
contains neither a statement of any of the rejections nor a reference to where we might find
a statement of the rejections. The final rejection does not help us; it does not contain a
statement of any prior art rejection. Rather, it is only the first Office action which contains a
statement of a rejection based upon prior art. Since the time of the first Office action, most
of the claims have been amended in a substantial manner. Logically, one would expect
that the examiner would need to restate the rejection to take into account the new claims.
This has not happened here.
This Board serves as a board of review. 35 U.S.C. § 7(b). The manner in which the
examiner has presented his case on appeal does not facilitate a review process. Rather,
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