Appeal 2006-3331
Application 10/829,797
Abecassis US 5,426,281 Jun. 20, 1995
Walker US 6,193,155 B1 Feb. 27, 2001
Tedesco US 6,282,523 B2 Aug. 28, 2001
Dahl US 6,321,201 B1 Nov. 20, 2001
Sunderji US 2003/0236728 A1 Dec. 25, 2003
McNeal US 6,728,397 B2 Apr. 27, 2004
The following rejections are before us for review:
1. Claims 1 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over McNeal, Braun, and Abecassis.1
2. Claims 2, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over McNeal and Abecassis.2
1 The addition of Abecassis to this rejection appears for the first time in the
Examiner’s Answer (Answer 3). Although an Examiner’s Answer may contain a
new ground of rejection, 37 C.F.R. § 41.39(a)(2) (2006), any such new ground of
rejection must be approved by a Technology Center Director or designee and
prominently identified in the “Grounds of Rejection to be Reviewed on Appeal”
section and the “Grounds of Rejection” section of the Answer. See MPEP
§ 1207.03. In the interest of expediency, and because the Appellant addressed
Abecassis on pages 6-7 of his Reply Brief and was thus afforded an opportunity to
respond to this new ground of rejection, we will not remand the case to the
Examiner for correction.
2 We do not understand how the Examiner can reject dependent claims based on
fewer than all of the references used to reject the corresponding independent
claims, since the dependent claims include all of the limitations in the independent
claims from which they depend. In particular, the Examiner relied on Braun for
the rejection of independent claims 1, 15, 18, and 24, but failed to include Braun in
the list of references relied upon for rejection of dependent claims 2-8, 16, 17, and
19-23. The Appellant failed to raise this issue in their briefs, and since we do not
find it necessary to rely on the teachings of Braun to affirm the rejections of
independent claims 1, 15, 18, and 24, this error on the part of the Examiner is
3
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