Appeal No. 2005-2543
Application 08/637,894
corrugations 12 of Locke in the reasonable expectation of obtaining additional sealing rings to
seal the end of the plunger to a wide range of drain holes.
We point that our consideration of the appealed claims vis-à-vis the combined teachings
of Tash and Locke involves materially different factual considerations than those involved with
the examiner’s grounds of rejection based on Scarella and Tash, with and without Locke, to
which appellant has not had an opportunity to respond. See generally, In re Eynde, 480 F.2d
1364, 1370-71, 178 USPQ 470, 474-75 (CCPA 1973); MPEP § 1213.02 (8th ed., Rev. 2, May
2004; 1200-32).
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to consider whether a new ground of rejection should be
entered on the record based on the above findings under either 35 U.S.C. § 102(b) or 35 U.S.C.
§ 103(a) as the examiner deems appropriate, for purposes of further prosecution of the appealed
claims, supplying and applying any other applicable prior art with respect to any or all of these
grounds as the examiner deems appropriate.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
This application, by virtue of its “special” status, requires immediate action. See MPEP
§ 708.01(D) (8th ed., Rev. 2, May 2004; 700-127). It is important that the Board of Patent
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