Appeal No. 1999-2064 Page 14
Application No. 08/619,853
In view of our determination above that claims 30 to 36,
38 and 40 to 48 define a "separate patentable invention" with
respect to claim 12 of Mowry and not the "same patentable
invention" as claim 12 of Mowry, 37 CFR § 1.131 requires that
the merits of the Kendrick Declaration be evaluated by the
examiner to determine if it is sufficient to overcome Mowry. 5
Since the examiner has not provided any acceptable reason for
not giving effect to the Kendrick Declaration, we are
constrained to reverse the rejection of claims 30 to 36, 38
and 40 to 48 and remand this application to the examiner to
consider on the record whether or not the Kendrick Declaration
is sufficient to overcome Mowry and if not, whether these
claims are patentable under 35 U.S.C. § 103 taking into
consideration the views we expressed above. With respect to
claims 29, 37 and 39, the examiner has established that Mowry
is claiming the "same patentable invention" for the reasons
set forth above. Thus, with respect to claims 29, 37 and 39,
5The record is unclear whether or not the examiner
considered the facts and evidence set forth in the Kendrick
Declaration sufficient to overcome Mowry if Mowry was
considered to not claim the "same patentable invention" as set
forth in 37 CFR § 1.601(n).
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