Appeal No. 2006-1873 Page 10
Reissue Application No. 08/058,163
whether claims 1-19 were properly rejected (1) under 35 U.S.C. § 112, first and
second paragraphs, (2) under 35 U.S.C. § 251 as based on a defective reissue
oath and (3) under 35 U.S.C. § 103 as being obvious over British Patent GB
1336495 (“the Ciba-Geigy reference”) (Brief,5 p. 2; Answer,6 p. 2).
The rejections on which these issues are based are vacated in view of the new
ground of rejection under § 251 entered by the Board. However, in the event of further
prosecution, the appellants and the examiner should take action consistent with the
following comments.
First, the examiner should avoid setting forth the reasons in support of her
rejection by reference to multiple prior office actions because the examiner’s position
vis-a-vis intervening amendments and/or rebuttal arguments submitted by the
appellants becomes unclear. For example, in regard to the rejection of claims 1-19
under 35 U.S.C. § 112, page 2 of the Answer incorporates the examiner’s reasoning
“set forth in the prior Office action paper number 07", while page 4 of Office action
paper number 7 (mailed 16 May 1994) refers to “the reasons, of record set forth in
paragraphs 4 and 5, of the previous Office action” mailed 12 November 1993 (Paper 5).
Second, the examiner should take a step back and reconsider the patentability of
5 Paper 11, filed 19 September 1994.
6 Paper 12, mailed 6 January 1995.
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