Appeal No. 2003-0992
Application 09/934,026
For the foregoing reasons, the appellant has shown error in the examiner’s rejection of
rejection of claims 3, 7, 8, 12 and 13 under 35 U.S.C. § 103.
The appellant also frames as an issue the question whether an interference should be
declared between its involved application and U.S. Patent No. 6,176,537. On page 7 of its
supplemental brief, the appellant states: While this may not clearly be an appealable issue,
[appellant] seeks the appeal board’s comments on this topic.” The only comment we give in that
regard is that the appellant should follow established procedures for commencing an interference
proceeding, which does not include seeking comments from this panel in an ex parte appeal, and
may consult with the examiner or the Interference Practice Specialist of the appropriate
Technology Center when the involved application has been returned to the examiner.
The examiner is urged to focus on and consider whether there is written description
support in the specification for each of the claims on appeal. At first glance, we see that the
specification discloses and refers only to configurations having a conductive film or surface
superimposed or overlaid on top of a plastic layer. The summary of invention section of the
specification appears to be no broader than that. If that is the case, it is at least questionable
whether there is written description in the specification for claims whose scope are broader. We
refrain from making a new ground of rejection at this point because there may be matters which
we have overlooked without having examined the application in the first instance and because we
would like to see the issue first developed between the examiner and the appellant. Therefore,
the examiner should conduct a thorough inquiry, keeping in mind that the requirements of 35
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