Appeal No. 1999-2085
Application 07/839,409
revived. During appellant's efforts to revive the application, an Appeal Brief was filed on
July 18, 1997 (Paper No. 21). In Section 6 of the Appeal Brief, appellant stated that the
three rejections set forth in the Final Rejection are the issues which the Board should
decide in this appeal. Appellant also stated in the paragraph bridging pages
3-4 of the Appeal Brief that claims 1 through 15 and claims 16 through 24 are “distinct”
groups. In arguing the merits of the rejections under 35 U.S.C. § 103, we note that
appellant separately argued claim 16 apart from claim 1. See, e.g., the paragraph
bridging pages 7-8 of the Appeal Brief.
The examiner entered his Answer on November 26, 1997 (Paper No. 22). At page
2 of the Answer, the examiner stated “[t]he appellant's statement of the issues in the brief is
correct.” At page 3 of the Answer, the examiner determined “[t]he rejection of claims 1-24
stand or fall together because appellant's brief does not include a statement that this
grouping of claims does not stand or fall together and reasons in support thereof.”
Despite agreeing with appellant that there are three issues for the Board to decide
in this appeal, the examiner only set forth a single ground of rejection in the Examiner's
Answer, i.e., under 35 U.S.C. § 103(a) based upon Geary or Moyle. The examiner did not
indicate the status of the enablement rejection nor the status of Aebi and U.K. 473,116 in
rejecting the claims under 35 U.S.C. § 103. Nor does the examiner address the separate
arguments contained in the Appeal Brief directed to claim 16.
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