Appeal No. 2000-0460
Application No. 08/444,584
Kakumu or Brillanti. Accordingly, the examiner should have been aware that
Bizollon and Testa were not the only references at issue. The Answer, however,
focuses solely on Bizollon and Testa, and fails to so much as mention Lai,
Cavaletto, Kakumu or Brillanti either affirmatively or collectively as “the other
secondary references.” The Answer fails to provide an explanation as to why Lai,
Cavaletto, Kakumu or Brillanti were no longer included in the ground of rejection.
The Answer also fails to identify this ground of rejection as “new.” In addition,
neither the Reply Brief, nor the Communication from the Examiner entering the
Reply Brief addresses this inconsistency in the statement of the ground of rejection.
Under these circumstances, we think it infelicitous to adjudicate the merits of
the examiner’s rejection where, as here, the issue presented for our review by the
examiner is inconsistent with the prosecution history in this application. In addition,
to the extent the examiner has “switched horses” in the Answer and presents a
different ground of rejection than that developed during prosecution, we note, as set
forth in 37 C.F.R. § 1.193(a)(2) (1998), “[a]n examiner’s answer must not include a
new ground of rejection….” We emphasize that the Answer was mailed after the
effective date of this rule.
Accordingly, we vacate the rejection of claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15,
16 and 18-21 under 35 U.S.C. § 103 as being unpatentable over Bizollon in view of
Testa, and remand this application to the examiner. On return of this application,
the examiner should take a step back and review the administrative file, including
the prosecution history, the specification and relevant prior art. If after this review
the examiner believes that a rejection is necessary, the examiner should clearly
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