Appeal No. 1997-1869
Application 08/215,462
(Fed. Cir. 1998). Without enumeration of the differences, it is not possible to determine “if the
differences between the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious . . . .” 35 U.S.C. § 103(a). Without this necessary fact
finding, we are unable to evaluate the correctness of the examiner’s conclusions on obviousness. The
examiner has simply not conducted sufficient fact finding to allow meaningful appellate review. The
examiner has, in effect, invited us to compare the references with the claims and make the necessary
fact findings as to the differences in the first instance. We decline this invitation. Instead, we vacate the
examiner’s rejection and remand the application to the examiner to provide an opportunity to make the
necessary fact findings. As a result of our vacatur, the claims currently stand unrejected. Nevertheless,
if, after making the necessary fact findings, the examiner concludes that the claimed subject matter
would have been obvious, then applicant must be informed of the reasons for that determination and
given an opportunity to respond.
VACATED AND REMANDED
)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD E. SCHAFER )
Administrative Patent Judge ) APPEALS AND
)
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