Ex parte KENDRICK - Page 6




          Appeal No. 1999-2064                                       Page 6           
          Application No. 08/619,853                                                  


          under 35 U.S.C.  102(e).  Specifically, the appellant argues               
          that Mowry is not claiming "the same patentable invention" as               
          the claims under appeal.                                                    


               8. The file record of this application indicates that                  
          this panel of the Board issued a remand (Paper No. 20, mailed               
          March 7, 2000) requiring the examiner to specifically identify              
          each provision of 35 U.S.C.  102 that the examiner is                      
          applying Mowry as prior art.  In addition, if the examiner was              
          relying on                                                                  
          35 U.S.C.  102(e) as a basis for applying Mowry as prior art,              
          we required the examiner to set forth factual evidence                      
          establishing that Mowry is claiming "the same patentable                    
          invention" as the claims under appeal.                                      


               9. The file record of this application indicates that in               
          the answer (Paper No. 21, mailed April 13, 2000) responding to              
          the Board's remand the examiner states (p. 6) that Mowry is                 
          prior art under 35 U.S.C.  102(e) and 35 U.S.C.  102(g).  In              
          addition, the examiner asserts (p. 6) that the factual                      
          evidence to establish that Mowry is claiming "the same                      







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