Appeal No. 2002-2341
Application 09/466,277
Claims 45 and 47 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marks in view of Howrilka and Watanabe as
applied to claims 52, 44 and 46 above, and further in view of
DeWilde.3
Rather than reiterate the examiner's full commentary
regarding the above-noted rejections and the conflicting
viewpoints advanced by the examiner and appellants regarding
those rejections, we make reference to the final rejection (Paper
No. 11, mailed October 26, 2001), the advisory action (Paper No.
3 On pages 4 and 5 of the examiner’s answer (Paper No. 16),
the examiner refers to Paper No. 11 (the final rejection) for an
explanation of each of the rejections on appeal. However, it is
eminently clear from the record of the present application that
the examiner, in both the advisory action mailed January 17, 2002
(Paper No. 13) and the examiner’s answer itself (pages 5-6), has
made significant changes to the position as set forth in the
final rejection, particularly with regard to what elements of the
basic reference to Marks correspond to the elements of
appellants’ claims on appeal. Indeed, it appears to us that the
examiner’s change in position in both the advisory action and the
examiner’s answer each constitutes new grounds of rejection.
Such new grounds of rejection, after a final rejection and
without re-opening of prosecution, are clearly contrary to Office
policy. However, given that appellants have not raised this as an
issue in the application and the fact that they have had an
opportunity to respond to each of the new grounds of rejection in
their brief and reply brief, we make no further comments in that
regard, except to note that the examiner’s reference back solely
to the final rejection in the examiner’s answer appears to be
clearly inappropriate.
4
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