Appeal No. 1998-2674
Application 08/329,724
Claims 20 and 21
Matthies
The Examiner does not repeat, but does not withdraw,
the final rejection's anticipation rejection of claims 20
and 21 over Matthies. Any rejection not repeated and
discussed in the examiner's answer may be taken by the Board
as having been withdrawn. Ex parte Emm, 118 USPQ 180, 181
(Bd. App. 1957). However, the Board has discretion to
consider the rejection. See Manual of Patent Examining
Procedure § 1208 (under "ANSWER": "Grounds of rejection not
argued in the examiner's answer are usually treated as
having been dropped, but may be considered by the Board if
it desires to do so." ). The reason is that it is
technically the examiner's final rejection that is being
reviewed under 35 U.S.C. § 134. See In re Webb,
916 F.2d 1553, 1556, 16 USPQ2d 1433, 1435 (Fed. Cir. 1990):
The regulations require that, "[i]n making such final
rejection, the examiner shall repeat or state all
grounds of rejection then considered applicable in the
case, clearly stating the reasons therefor." 37 C.F.R.
§ 1.113(b). It follows, then, that an examiner's final
rejection, which precipitates the statutory right to
appeal to the Board, 35 U.S.C. § 134 (1988),
constitutes the "decision" of an examiner for purposes
of § 1.196(a).").
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