Appeal 2006-2410
Application 09/983, 235
the basis of the rejection of the claimed subject matter is unclear on the
present record.
The Board of Patent Appeals and Interferences is a board of review
and not a vehicle for initial examination. See 35 U.S.C. § 6(b)(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 fact 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).
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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