Appeal No. 1999-2200 Application No. 08/896,063 In addition, both patents cite on their face, as considered, prior art relied upon in the present application to support the rejection under 35 U.S.C. § 10333. While the examiner may issue a rejection if appropriate under these circumstances, a rejection using the rationale set forth above would appear to require the signature of the Group Director. Compare Manual of Patent Examining Procedure (MPEP) ' 2307.02 (7th ed., July 1998). We note the Group Director did not sign the examiner’s action. Generally, appeals on these facts are remanded to provide the examiner an opportunity to consider the issued patent and determine its effect, if any, on the issues raised under 35 U.S.C. § 103. However, after considering the facts in this case we believe the better course of action is to move forward with a decision on the merits of this appeal. The initial burden of establishing reasons for unpatentability rests on the examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Furthermore, we note the direction provided by In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991): Where the subject matter has been rejected as obvious in view of a combination of prior art references, a proper analysis under § 103 requires, inter alia, consideration of two factors (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success. . . . Both the suggestion 33 The ‘023 patent cites Heinemann, Sommer, Puckett and Bettler as considered. The ‘855 patent cites Heinemann, Puckett and Bettler as considered. 15Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 NextLast modified: November 3, 2007