Appeal No. 2005-1415 Page 5
Application No. 09/253,174
from web W that is described in column 2, line 60 to column 3, line 3, but we cannot determine
which of the structures is the basis for the rejection. Without knowing what structure the
Examiner is relying upon to meet the limitations of the claim, we cannot determine whether the
Examiner erred in making the rejection. We note that the Board is required by the Federal
Circuit to analyze the claims on a limitation-by-limitation basis, with specific fact findings for
each contested limitation and satisfactory explanations for such findings. Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1033 (Fed. Cir. 1997). Such an analysis cannot be
completed here where the Examiner has not identified which structure of Madole is relied upon
and how that structure meets all the limitations of the claim.
It is the Examiner’s initial burden to establish reasons of unpatentability. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). However, we think reversal of
the Examiner’s decision to reject claim 19 would be premature in the present case. The facts
have been insufficiently developed with respect to key issues. In such circumstances, a remand
to the primary fact finder, the Examiner, for further development of the record is appropriate. It
is important that ambiguous or obscure bases for decision do not stand as barriers to a
determination of patentability.
We conclude that the Examiner has established that the subject matter of claims 13 and
15 is anticipated by Madole but has failed to failed to provide sufficient fact finding to allow
review of the rejection with respect to the subject matter of claim 19.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007