Appeal No. 1997-3096
Application 08/391,407
appellants’ countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claims 34 and 35 would have been obvious as a
matter of law under 35 U.S.C. § 103.
In summary, we have affirmed the ground of rejection of claims 16 through 19, 31 and
33 under 35 U.S.C. § 102(b) as anticipated by Nakamura and the ground of rejection of claims
34 and 35 under 35 U.S.C. § 103, and we have reversed the ground of rejection of claim 32
under 35 U.S.C. § 102(b) as anticipated by Nakamura as well as all other grounds of rejection
under 35 U.S.C. § 102(b).
The examiner’s decision is affirmed-in-part.
Remand
We decline to exercise our authority under 37 CFR § 1.196(b) (1997) to enter new
grounds of rejection and instead remand the application to the examiner for consideration of
issues raised by the record. 37 CFR §1.196(a) (1997); Manual of Patent Examining Procedure
(MPEP) § 1211 (7th ed., Rev. 1, Feb. 2000; 1200-24).
The examiner should consider the issue of whether claims 32, 34 and 35 comply with the
provisions of § 112, second paragraph (see above notes 5 and 8).
The examiner should consider the issue of whether claims 16 through 19, 31 and 33
through 35 comply with the provisions of 35 U.S.C. § 112, first paragraph, written description
requirement, because the scope of these claims appears to be greater than the scope of the
invention disclosed in appellants’ specification in the absence of a requirement that a low density
polyethylene be combined with the thermoplastic elastomer as in claim 32 (see above pp. 7 and
9). See generally, In re Wertheim, 541 F.2d 257, 262, 264, 191 USPQ 90, 96, 98 (CCPA 1976).
The examiner should consider and provide an explanation with respect to the issue of
whether any of Adur ‘968, Komatsu ‘651, Komatsu ‘796, Sezaki, Kosaka, Baxmann, Abe,
Kawai, Ito, Adur ‘127 or Komatsu ‘683 describe the invention encompassed by one or more of
claims 16 through 19 and 31 through 33 within the meaning of § 102(b) or § 102(e) (see above
pp. 14-15).
The examiner should consider the issue of whether one or more of claims 16 through 19
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