Appeal 2006-2681
Application 10/044,407
document obtained and the suitability of including this document in the
rejection.
The BPAI is a Board of review and not a vehicle for initial
examination. See 35 U.S.C. § 6(d)(2000). The burden is on the Examiner to
set forth a prima facie case of obviousness. See In re Alton, 76 F.3d 1168,
1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). Findings of facts and
conclusions of law must be made in accordance with the Administrative
Procedure Act, 5 U.S.C. § 706(a) (E)(1994). See Zurko v. Dickinson, 527
U.S. 150, 158, 119 S. Ct. 1816, 1821, 50 USPQ2d 1930, 1934 (1999).
Findings of fact relied upon in making the obviousness rejection must be
supported by substantial evidence within the record. See In re Gartside, 203
F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000).
In light of the above facts, we feel that it is premature to decide the
issues in this appeal. More fact finding needs to be completed on this record
by the Examiner in view of the full SU 1743887-A1 reference.
CONCLUSION
In summary, the instant application is remanded to the Examiner to
consider the aforementioned issues and act accordingly.
This Remand to the Examiner pursuant to 37 C.F.R. §
41.50(a)(1)(2004) is made for further consideration of a rejection.
Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental Examiner's
Answer is written in response to this remand by the Board.
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Last modified: November 3, 2007