Appeal No. 1997-4379
Application No. 08/278,437
not labeled as a new ground of rejection and the examiner explicitly states that the
"Examiner's Answer does not contain any new ground of rejection" (Examiner's Answer,
page 8).
Based on this procedural history, we are confused as to why this rejection does
not constitute a new ground. It appears that the examiner withdrew the only prior art
rejection made in the Final office action, the one rejecting claim 1 over the combined
disclosures of Lyle, Dean, Edwards and Jost. The rejection now before us not only
affects all of the claims under appeal, but it is also based on a different primary and,
apparently, a different rationale. Without further clarification from the examiner, we are
unable to address the merits of this rejection since it has not been adequately briefed.
Accordingly, because of the conflict between the Final office action and the
examiner's answer, we vacate the examiner's rejection under 35 U.S.C. § 103.1
1 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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