Appeal No. 2004-1004
Application No. 10/011,074
anticipated by Elges. (Answer, page 3; final Office action,
page 3.)1
We reverse: (i) the 35 U.S.C. § 102(b) rejection of
appealed claims 1 and 8 as anticipated by Welch; and (ii) the 35
U.S.C. § 102(e) rejection of appealed claim 2 as anticipated by
Elges. We affirm, however, the 35 U.S.C. § 102(e) rejection of
appealed claims 1, 3 through 5, 8, and 9 as anticipated by
Elges.2 Also, we remand this application pursuant to 37 CFR §
1.196(a)(2003)(effective Aug. 20, 1989).
1 On page 3 of the answer, the examiner states: “Claims 1-9
are rejected under 35 U.S.C. 103(a). This rejection is set
forth in prior Office Action, Paper No. 5.” We note, however,
that claim 5 was not finally rejected under 35 U.S.C. § 103(a).
Instead, claims 1-4, 8, and 9 were finally rejected under 35
U.S.C. § 103(a) as unpatentable over U.S. Patent 2,149,054
issued to Jones on Feb. 28, 1939 in view of Elges or Welch
(final Office action, p. 3), while claims 6 and 7 were finally
rejected under U.S.C. § 103(a) as unpatentable over Jones in
view of Welch or Elges and further in view of U.S. Patent
3,035,368 issued to Collins on May 22, 1962 (id. at p. 5).
Also, the examiner contradicts the statement made on page 3 of
the answer by commenting as follows: “The rejections of claims
1-9 under 35 U.S.C. 103(a) using the Jones reference US 2149054
as modified by Elges, Welch and/or Collins reference US 3035368,
are dropped in that applicant’s arguments are persuasive.”
(Answer, p. 4.) Notwithstanding this confusion, we note that
the examiner does not dispute the appellant’s understanding
(reply brief filed Dec. 22, 2003, paper 11, pp. 6-7) that the 35
U.S.C. § 103(a) rejections based on Jones as a principal
reference have been withdrawn. (Office letter mailed Feb. 10,
2004, paper 12.) We presume, therefore, that these rejections
are not before us in this appeal.
2 The appellant submits: “Claims 2-7 are dependent on
independent claim 1. Claim 2 is separately patentable. Claims
3
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