Appeal No. 1997-4426
Application No. 08/515,767
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 29 and 31-52. Accordingly, we reverse.
At the outset, we note that the examiner has not
specifically made a rejection of the claims under the first
paragraph of 35 U.S.C. § 112, yet the examiner makes several
observations in the prior art rejection which apparently
question the adequacy of the disclosure to support the claimed
invention. We agree with appellants that the examiner cannot
properly make such an implied rejection. All rejections must
be clearly made of record accompanied by an appropriate
explanation of the basis for each rejection. The examiner’s
reasons for questioning the disclosure make no sense to us.
For example, the examiner notes that there is
insufficient supporting disclosure to make a determination of
whether there is supporting disclosure for some of the claimed
elements [answer, pages 7-8]. The examiner indicates that he
dropped the rejection of the claims under the first paragraph
of 35 U.S.C. § 112 because there was a lack of sufficient
supporting disclosure to make an intelligent determination in
that regard. This reasoning is bizarre and makes no sense to
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