Appeal No. 2000-1703
Application No. 08/963,545
21, dependent upon claim 20, under 35 U.S.C. § 103 over
Gutzwiller cannot be sustained.
NEW GROUND OF REJECTION
We make the following new ground of rejection for claims 20-
23 under 35 U.S.C. § 102 pursuant to 37 CFR § 1.196(b). The new
ground of rejection is based on the Jackson 2 reference which was
cited by Appellants in an information disclosure statement filed
May 10, 1999. The presence of the Jackson reference in the file
prior to entry of the Examiner’s answer is of great concern,
which compels us to provide a more detailed discussion later in
this opinion.
A. New ground of rejection based on Jackson
Claims 20-23 are rejected under 35 U.S.C. § 102(b) as
anticipated over Jackson.
Although we did not need to assess whether the terms recited
in the preamble of claims 20 and 23 are limiting, we will
determine the scope of these claims before the new ground of
rejection is discussed. In particular, we will determine whether
the limitations of “within a building” and “for use in a
building,” as recited in the preamble of claims 20 and 23
respectively, affect the structure of the claimed invention.
2 Jackson et al.(Jackson) 5,142,694 Aug. 25, 1992
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