Appeal 2006-3206
Application 09/550,276
determining the Acorresponding structure@ for the Afunction@ in the limitation
that is described in the specification, and then determining whether the
corresponding structure or Aequivalents@ thereof are taught or suggested by the
applied prior art,1 in a manner consistent with the requirements of 35 U. S. C.
§ 112, sixth paragraph, in order to determine whether the references are
applicable to the interpreted claims under § 102(b) and/or § 103(a), and if so,
setting forth the interpretation, findings, and determinations in a Supplemental
Examiner’s Answer; and (4) establish on the record the process performed by
SurModics, Inc. and whether this process is prior art to Appellant, under with a
view toward placing this application in condition for decision on appeal with
respect to the issues presented.
This Remand is made for the purpose of directing the Examiner to
further consider the grounds of rejection. Accordingly, if the Examiner
submits a Supplemental Answer to the Board in response to this Remand,
“appellant must within two months from the date of the supplemental
examiner’s answer exercise one of” the two options set forth in 37 C.F.R.
§ 41.50(a)(2) (2006), “in order to avoid sua sponte dismissal of the appeal as
to the claims subject to the rejection for which the Board has remanded the
proceeding,” as provided in this rule.
1 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
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