Appeal No. 2006-3137 Page 2
Application No. 10/037,799
First, we note that the After-Final amendment filed with the original Brief, on
Aug. 2, 2005, has not been addressed and entered by the Examiner. Additionally, we
note the Appellants’ corrected Brief indicates an amendment is filed therewith, but we
find no such amendment. We assume that this was the amendment filed with the original
Brief. The Examiner should address the amendment and mail an Advisory Action. If the
amendment is not entered, then a corrected claims appendix is needed for Appellants’
Brief.
Second, we note that the Examiner has not restated the rejection under 35 U.S.C.
§ 112, second paragraph, in the Answer, but has agreed with Appellants’ statement of the
grounds of rejection to be reviewed (Brief, page 6 and Answer, page 2). Clarification is
required as to whether this rejection is maintained or withdrawn.
Third, the Examiner listed the Bauer reference in the first Office action and in the
Final with a different patent number in the rejection under 35 U.S.C. § 102 than the
Bauer reference used in the 35 U.S.C. § 103 rejection. That reference is not named
Bauer. Appellants did not mention this discrepancy, nor did the Examiner mention it. In
the Examiner’s Answer, the Examiner used the same Bauer reference 5,870,759.
Clarification is needed whether this is the correct reference and a typographical error has
been present throughout the prosecution or if this is a new ground of rejection.
Fourth, we note that the Appellants’ claims on appeal include means plus function
limitations, but we do not find that the Summary of Claimed Subject Matter in the Brief,
dated Oct. 18, 2005, specifically identifies any corresponding structure, acts, or materials
in the specification to carry out the recited functions. Nor has the Examiner addressed
these limitations or identified whether it would have been obvious to one skilled in the
art, at the time of the invention, that the structure would have been known. This is a
claim interpretation issue that the Appellants and the Examiner need to address before we
can address the merits of the rejection under 35 U.S.C. §§ 102 and 103. We direct the
Examiner’s attention to MPEP § 2181 as it relates to 35 U.S.C. § 112, Paragraph six, as it
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