Appeal 2006-2640
Application 10/364,657
combined such machines to arrive at the claimed methods encompassed by
the appealed claims.
Accordingly, the examiner is required to take appropriate action
consistent with current examining practice and procedure to consider the
knowledge in the art, as admitted by Appellants as well as developed from
patent and non-patent prior art documents and other evidence, see, e.g.,
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to
combine [the references] arose from the very nature of the subject matter
involved, the size of the card intended to be enclosed.”), and determine
whether a new ground or grounds of rejection of one or more of the pending
claims in this application under 35 U.S.C. §§ 102(b) and 103(a) should be
entered on the record.
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.
REVERSED AND REMANDED
clj
Harness, Dickey, & Pierce, P.L.C.
77009 Bonhomme, Ste 400
St. Louis, MO 63105
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