Appeal No. 1995-2789
Application No. 07/788,114
one year before applicants’ filing date.” The examiner notes (id.) “page 16 of the
[e]xaminer’s Answer where the previous [e]xaminer alluded to maintaining a
[rejection under] 35 U.S.C. § 102(a)…” [emphasis added]. The examiner
appears to rely (id.) on Follettie as evidence of this “prior knowledge.”
The Answer, however, contains no rejection of claims 1, 2, 5-7 and 10-13
under 35 U.S.C. § 102(a) based on prior knowledge. Therefore, any such
rejection is not properly before us for review. Nevertheless, for completeness, to
the extent the claims could be considered, we note that neither the Answer, nor
the Supplemental Answer, provides a fact-based analysis that addresses the
limitations of the claimed invention relative to what the examiner considers “prior
knowledge.” Accordingly, we vacate10 any such rejection under 35 U.S.C.
§ 102(a) based on prior knowledge, and remand the application to the examiner
for further consideration.
Upon return of the application, the examiner should step back and
reconsider the claimed invention, together with relevant prior art and other
evidence of record. If, the examiner finds that a rejection is necessary, the
examiner should issue an appropriate Office Action, clearly explaining the basis
for such a rejection, and providing appellants an opportunity to respond.
10 Lest there be any misunderstanding, the term “vacate” in this context means to
set aside or to void. When the Board vacates an examiner’s rejection, the
rejection is set aside and no longer exists.
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