Appeal No. 2000-2226 Page 9
Application No. 08/827,107
Although the disclosure of EP-A-0036442 appears relevant to the invention of
claim 15, and modifying Takagi’s teaching of a movable antenna to operate as a belt-
clip also may have been obvious, “the Board is basically a board of review — we review
. . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211
(Bd.Pat.App. & Int. 2001). “The review authorized by 35 U.S.C. Section 134 is not a
process whereby the . . . [B]oard . . . examine[s] the application and resolve
patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112
(Bd.Pat.App. & Int. 1999). Therefore, we remand the instant application to the
examiner to consider the relevance of EP-A-0036442 and of Takagi in view of Harrison.
The examiner should reassess the patentability of each of claims 15-18 in view of EP-
A-0036442 and of Takagi in view of Harrison. He should document his conclusions on
the record, e.g., by making a rejection or by writing reasons for allowance. “An
examiner’s answer must not include a new grounds of rejection. . . .” 37 C.F.R.
§ 1.193(a)(2)(2001). Accordingly, if the examiner decides that any claim is
unpatentable, he should reopen prosecution to make an appropriate rejection in a new
Office action and give the appellants an opportunity to respond thereto. M.P.E.P.
§ 1208.01 (8th ed., Aug. 2001).
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