Appeal No. 1999-2328 Page 9
Application No. 08/485,492
meet the standard set forth in Section 1208(A)(10)(c) of the Manual of Patent
Examining Procedure, which states:
For each rejection under 35 U.S.C. § 102, the examiner’s answer, or a
single prior action, shall explain why the rejected claims are anticipated
and not patentable under 35 U.S.C. § 102, pointing out where all of the
specific limitations recited in the rejected claims are found in the prior art
relied upon in the rejection.
Especially under the circumstances presented in this case, the fact that the examiner
has left the appellant and the Board to their own devices to determine how the claimed
subject matter reads on the references is unacceptable.
The result of the shortcomings described above is that the examiner and the
appellant have not placed on the record sufficient information to allow the Board to
determine whether Pryor and Joffe are valid references and whether or not the subject
matter recited in the claims on appeal is anticipated by Pryor and/or Joffe. This being
the case, we hold our decision on these rejections in abeyance pending action by the
examiner in accordance with the remand of this application.
REMAND TO THE EXAMINER
This application is remanded to the examiner for action to alleviate the
shortcomings in the record discussed above with regard to the rejection under
35 U.S.C. § 102. Specifically, the examiner is requested to do the following:
(1) Determine whether or not the subject matter, as a whole, recited in
each of the claims on appeal is entitled to the filing date of Joffe U.S.
Patent No. 5,331,861, and provide reasons in support of each
determination.
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