Appeal No. 1999-0329
Application No. 08/212,818
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1033 (Fed. Cir. 1997), “For an appellate court to fulfill its role of judicial
review it must have a clear understanding of the grounds for the decision being
reviewed,” which requires that “[n]ecessary findings must be expressed with
sufficient particularity to enable [the] court without resort to speculation, to
understand the reasoning of the board, and to determine whether it applied the
law correctly and whether the evidence supported the underlying and ultimate
fact-findings.” Like the Court of Appeals in Gechter, this board requires a clear
understanding of the grounds for the decision being reviewed. In this case, we
find it difficult to understand the examiner’s reasoning and whether the evidence
upon which she relies supports the underlying fact-findings for the rejections
under 35 U.S.C. § 103. Given the substantial degree of confusion regarding the
statement of the rejections and the references relied upon in support of the
rejection, we vacate the outstanding rejections and remand the application to the
examiner to clarify the record.
We, however, are not authorizing a Supplemental Examiner’s Answer
under the provisions of 37 CFR § 1.193(b)(1). Any further communication from
the examiner that contains a rejection of the claims should provide appellants
with a full and fair opportunity to respond.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007