Appeal No. 1997-3221
Application No. 08/249,241
In addition, both patents cite on their face, as considered, prior art relied
upon in the present application to support the rejection under 35 U.S.C. § 10333.
While the examiner may issue a rejection if appropriate under these
circumstances, a rejection using the rationale set forth above would appear to
require the signature of the Group Director. Compare Manual of Patent Examining
Procedure (MPEP) ' 2307.02 (7th ed., July 1998). We note the Group Director did
not sign the examiner’s action.
Generally, appeals on these facts are remanded to provide the examiner an
opportunity to consider the issued patent and determine its effect, if any, on the
issues raised under 35 U.S.C. § 103. However, after considering the facts in this
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
The initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992). Furthermore, we note the direction provided by In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991):
Where the subject matter has been rejected as obvious in view
of a combination of prior art references, a proper analysis under §
103 requires, inter alia, consideration of two factors (1) whether the
prior art would have suggested to those of ordinary skill in the art that
they should make the claimed composition or device, or carry out the
claimed process; and (2) whether the prior art would also have
revealed that in so making or carrying out, those of ordinary skill would
have a reasonable expectation of success. . . . Both the suggestion
33 The ‘023 patent cites Heinemann, Sommer, Puckett and Bettler as considered.
The ‘855 patent cites Heinemann, Puckett and Bettler as considered.
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