Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 15


                  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.                                           

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