Appeal No. 2004-1267
Application No. 08/873,974
appeal before us. Appellants take the position that the
rejection was, in fact, on appeal because they had appealed from
the examiner’s rejection of the claims under 35 U.S.C. § 112 and
that we must decide the propriety of this rejection even in the
face of the examiner’s withdrawal of such rejection.
We disagree. Once an examiner withdraws a rejection of
claims, at or before the time of the answer, that rejection is no
longer before us on appeal and we will not issue an opinion as to
the propriety of a now-theoretical rejection.
Appellants are concerned that since there was a suggestion
of reopening prosecution in our decision1, a lack of a decision
by us regarding the § 112 rejection might leave appellants open
to re-imposition of that rejection by the examiner.
If, and when, the examiner deems it appropriate to make a
rejection under 35 U.S.C. § 112, and such rejection is appealed
to us, we will treat that rejection. But, at least at the time
of the answer, the examiner no longer believed a rejection under
35 U.S.C. § 112 to be proper and chose not to make it. The Board
would find itself in an awkward position attempting to decide an
1We indicated in the decision, at page 9, that the
examiner’s rejection of claims 54, 63-69, 73-79, and 83-89 under
35 U.S.C. § 103 was a new ground of rejection, not permitted
under 37 CFR 1.193 (a)(2), and remanded to the examiner to either
withdraw the rejection or reopen prosecution.
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