Appeal No. 1999-1686 Page 2
Application No. 08/552,206
A. If the PTO insists on this law-based approach to solve its Markush
claim problem, it is requested that the Board withdraw its remand,
reinstate the examiner's Markush rejection after considering the
additional facts outlined below and permit applicants to appeal to
the Federal Circuit so that the patent community can get that
court's first take on this issue.
B. Alternatively, if the Board prefers, it is respectfully submitted, to
respect clear precedent, then, it is requested that it withdraw its
remand, confirm the propriety of appellant's [sic] Markush group,
and leave it to the director to establish a fair procedure to limit
unreasonable searching burdens caused by Markush claims.
We decline to take either action.
As explained at page 12 of our original opinion, "[r]ather than reverse the
rejection, we believe it more appropriate to vacate the rejection and remand the
application to the examiner for fact-finding in the first instance with respect to the
Markush issue." We then set forth certain factors which we believe relevant in
determining whether a Markush group is proper. As made clear at page 20 of our
opinion "nothing in this opinion should be construed as precluding a further rejection of
the claims based on (1) an improper Markush or other group or (2) prior art uncovered
as a result of an examination on the merits of the R1 embodiments of claim 1 which are
not phenyl embodiments, matters on which we express no opinion on the merits"
(emphasis added).
The substance of appellants' request takes issue with our observations
concerning factors which may be relevant in determining whether a Markush group is
proper. We decline to reinstate the examiner's rejection as requested because, as set
forth in detail in our original opinion, the examiner failed to make appropriate findings of
fact to support such a rejection. In making our observations in regard to improper
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