II.
The examiner rejected claims 1-10, 12, and 13 as being anticipated by the
Spielman reference. In its Appeal Brief, applicant argues that a portion of the Spielman
reference teaches away from its claimed invention. That portion is said to be a copy of a
transparency labeled WPL-16. (Appeal Brief (“Brief”) at 13). Neither the examiner, the
applicant nor the requestor appears to have cited WPL-16. (See, e.g., information
disclosure statement submitted 19 July 2001 at Tab 8). In addition, there appears to be a
number of other transparencies from the Spielman reference that are not found in the
record before us.3
We hesitate to make a determination as to whether the Spielman reference
anticipates the claimed invention without benefit of the entire reference and the
examiner’s consideration of the entire reference. We have only a vague idea of what the
other transparencies of the Spielman reference show and whether what they show may be
relevant to the issues on appeal.
Therefore, upon return of the reexamination proceeding to the jurisdiction of the
examiner, the examiner should:
(1) obtain a complete copy of the Spielman reference,
(2) enter the complete copy of the Spielman reference into the official record,
and
(3) consider the complete Spielman reference and determine whether to maintain,
withdraw, supplement, or otherwise modify the rejections presently on appeal.
3 We surmise that there are other transparencies from pages 1-4 of the Spielman where what appears
to be a brief summary of each transparency is provided.
3
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007