The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 56
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS J. BORODY
__________
Appeal No. 2002-1371
Application No. 08/474,796
__________
ON BRIEF
__________
Before, WINTERS, SCHEINER, and ADAMS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
VACATUR and REMAND TO THE EXAMINER
Having reviewed the record in this appeal, we have determined that the
rejection under 35 U.S.C. § 112, first paragraph is not based upon the correct
legal standards. Accordingly we vacate1 the rejection under 35 U.S.C. § 112,
first paragraph. In addition, there are a number of issues that need to be
clarified by the examiner. Thus, we remand the application to the examiner to
consider the following issues and take appropriate action.
Claim 27 is illustrative of the subject matter on appeal and is reproduced
below:
1 Lest there be any misunderstanding, the term “vacate” in this context means to set aside or to
void. When the Board vacates an examiner’s rejection, the rejection is set aside and no longer
exists. Therefore the issues set forth herein cannot be satisfied by a Supplemental Examiner’s
Answer. See Ex parte Zambrano, 58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2000).
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