Appeal No. 1999-1686 Page 3
Application No. 08/552,206
Markush groups, we made clear that we were not making such findings but, rather,
delineating factors which may prove helpful in resolving the issue. What is needed is a
reasoned exchange of views by the examiner and applicants in the context of an ex
parte examination/prosecution, not in the context of a request for rehearing in an appeal
proceeding before this board.
Nor do we find appellants' proposed alternative relief that we "confirm the
propriety of appellants' Markush group" appropriate. Again, as explained in our original
opinion, we believe there is a substantive issue in this application concerning whether
the Markush group set forth in the claims on appeal is proper. By vacating the
examiner's rejection and remanding the application to the examiner to further consider
the issue, appellants will have their "day in court" in front of the examiner in the context
of an ex parte examination where this issue can be fully explored. Any further action in
this application by the examiner will undoubtedly take into account the views expressed
by appellants in their request for rehearing before this board. It may be that the
examiner will determine that the claims do not contain an improper Markush group
which would end the matter. On the other hand, if the examiner does determine that
the claims contain an improper Markush group, he will undoubtedly reopen prosecution
and institute such a rejection in a manner which provides appellants a full and fair
opportunity to respond. It is only after such a reasoned exchange of views that this
board will be in a position to finally determine the matter.
We have carefully reviewed appellants' request for rehearing but decline to
change our decision in any manner.
REHEARING DENIED
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