Appeal No. 2001-0931 Page 10
Application No. 09/104,476
prior art references for combination in the manner claimed.=@ Ecolochem Inc. v.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000).
For the forgoing reasons, we vacate the examiner’s rejection and remand
the application to the examiner to provide him with an opportunity to reevaluate
his position in light of the correct legal standards.
If upon review of the file wrapper and other relevant documents, the
examiner remains of the opinion that the claims on appeal are unpatentable, he
should issue an appropriate Office action that sets forth the facts and reasons
used in support of such a rejection.
In addition, we note that the rejection set forth in the Answer
encompasses a plurality of claims but does not state with any specificity why any
individual claim is unpatentable. If the examiner maintains a rejection under 35
U.S.C. § 103, we suggest the examiner review MPEP § 706.02(j) for a model of
how to explain a rejection under this section of the statute. Adherence to this
model will of necessity require that the examiner consider the patentability of the
claims in an individual manner and set forth the facts and reasons in support of
why individual claims are unpatentable.
FUTURE PROCEEDINGS
We state that we are not authorizing a Supplemental Examiner’s Answer
under the provisions of 37 CFR § 1.193(b)(1). Any further communication from
the examiner which contains a rejection of the claims should provide appellants
with a full and fair opportunity to respond.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007