Appeal No. 2001-0421
Application 08/926,835
Appellants and the examiner are responsible for the record
they forward to the Board and it is the responsibility of the
assigned merits panel to review the examiner’s adverse decision
on the basis of that record. Not every record forwarded to the
Board is susceptible to meaningful review. Prior to pursuing an
appeal or writing an Examiner’s Answer, appellants and the
examiner should respectively take a step back from the case and
objectively view the record and ensure that their position is
susceptible to meaningful review. A hallmark of such a record is
a reasoned exchange of views as to claim construction, especially
those aspects of the claims where the patentability issues lie.
This did not happen in this case
Nor do we find the fact that appellants, the examiner and
appeal conferees did not consider claim 1 to be ambiguous to mean
that the claim is definite under 35 U.S.C. § 112, second
paragraph. The provision of an administrative appeal within the
agency as well as the provisions of 37 CFR § 1.196(b) in regard
to the Board making new grounds of rejection presuppose that
appellants and the examiner, as well as reviewers or conferees in
the Examining Corps, may overlook or misapprehend reasons
relevant to the patentability of the pending claims. The lack of
a rejection by the examiner is not controlling on the issue.
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