Appeal No. 2006-0696
Application 90/005,546
vice versa. The examiner should determine the scope and content of claims 49 and 23
separately.
The examiner has not established a prima facie case with respect to the rejections made.
Ordinarily, an examiner’s rejection would be reversed when the examiner has failed to make out
a prima facie case. However, here we vacate the examiner’s rejection and remand the
application to the examiner for further consideration. We do so this because the examiner, at
least with respect to the Lindsey reference, appears to have raised a valid question of patentability
2
for at least some of the claims. However, without proper claim construction, the patentability of
the claimed subject matter over the prior art cannot be adequately evaluated. Accordingly, we
can neither reverse nor sustain the examiner’s rejections of the claims. See MPEP § 2181,
Eighth Edition, Revision 4 (Oct. 2005). The appeal is not ripe for our consideration.
We do not remand the application without good cause. There are far too many claims
with far too many means-plus-function limitations where a construction of the claims is lacking
or altogether missing and the prior art teachings have not been adequately compared to the full
scope of the subject matter claimed. Our principal function is review, not examination de novo.
Lastly, we note that the examiner has made multiple rejections. Prior art rejections
should ordinarily be based on the best available art. Cumulative rejections, should be avoided.
See Id. § 706.02(I). Upon reconsideration, the examiner is encouraged to apply only the best
2During oral argument, the panel asked counsel for applicants why the teachings of
Lindsey did not meet certain limitations of independent claim 19. Counsel for applicants
responded that for claim 19, “the examiner has a pretty strong case with respect to this claim.”
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