Ex parte KENDRICK - Page 14




                 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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