Appeal No. 2004-1523
Application 09/506,920
Regarding the examiner’s rejection of dependent claims 12
through 15, 18 through 20, 25 and 26 under 35 U.S.C. § 103(a)
based on Smithe alone, suffice to say that our discussions of the
deficiencies in Smithe above are determinative of this rejection
also. Accordingly, we will not sustain the examiner’s rejection
of these claims under 35 U.S.C. § 103(a).
To summarize: the rejections under 35 U.S.C. § 102(e) and
under 35 U.S.C. § 103(a) before us on appeal as posited by the
examiner have not been sustained. Thus, the decision of the
examiner rejecting claims 1 through 21, 23 through 27 and 34
through 40 of the present application is reversed.
In addition to the foregoing, we find it necessary to REMAND
this case to the examiner under 37 CFR § 41.50 for consideration
of the following issues:
1) During any further prosecution of the application, the
examiner should consider whether a rejection of claim 16 under
35 U.S.C. § 102(e) based particularly on Smithe Figures 8-18
would be appropriate. In that regard, we note that the language
of process claim 16 differs markedly from that set forth in the
apparatus claims, in that claim 16 recites control of a first
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