Appeal No. 1998-1664
Application No. 08/323,982
The examiner, however, has not addressed the appellants’
argument with respect to appealed claim 23. On remand, the
examiner should do so.
3. In the answer at page 2, the examiner states:
The appellant’s statement of the issues in the
brief is substantially correct. The changes are as
follows: In the final rejection mail[ed] January 6,
1997, claims 47 and 77 are rejected under the second
paragraph of 35 USC § 112. This rejection should
have been under the fourth paragraph of 35 USC §
112. Appellants’ Brief does not identify this
rejection as an issue on appeal or present any
arguments directed thereto. Accordingly, the
rejection of claims 47 and 77 under the second
paragraph of 35 USC § 112 is expressly withdrawn.
This statement cannot be understood. Specifically, we
are unclear whether the examiner has withdrawn the rejection
because (1) it is considered to lack merit or (2) the
appellants have not contested it. On remand, the examiner
should clarify the record. Also, if a rejection under 35
U.S.C. § 112, fourth paragraph, is warranted, it should be
made.
In summary, we reverse rejections I and II above. With
respect to rejections III and IV, we remand the application to
the examiner for the reasons stated above. Also, we remand
this
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