Appeal No. 2000-1559 Page 10
Application No. 07/911,593
the rejection is not now susceptible to meaningful appellate review. On return of this
application to the Examining Corps, we recommend that the examiner reevaluate the
patentability of all of the appealed claims over the prior art cited in this rejection. A
good "beginning point," we believe, would be a comparison of claim 5 with the Smith
reference, Example 11 (pages 36 and 37).
We vacate the rejection of all the appealed claims under 35 U.S.C. § 103(a), to
the extent predicated on Zygraich and Ijaz, further taken in view of Smith.
Welter
The statement of rejection based on Welter is set forth in the Examiner's Answer
(Paper No. 42), pages 7 and 8; and the response to applicants' arguments may be
found at pages 17 and 18. Given the complexity of this case, however, and the multiple
independent claims presented for review, we cannot fairly appraise the merits of the
examiner's rejection without a more detailed briefing.
Again, our review of this rejection has been hampered by lack of an adequate
claim-by-claim analysis. The examiner has not adequately applied the prior art, taking
into account the requirements of each independent claim included in the rejection.
Because of the lack of claim-by-claim analysis, the rejection of claims 5, 6, 8 through
13, 15 through 21, and 29 through 31 under 35 U.S.C. § 102(e) as anticipated by
Welter is vacated. Cf., In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1432 (Fed.
Cir. 2002)(For judicial review to be meaningfully achieved, agency tribunal must present
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