Ex Parte Chang et al - Page 9

              Appeal No. 2007-0332                                                                  
              Application No. 10/316,312                                                            
              received on Aug. 26, 2005.  We note that the Final Rejection (mailed Nov.             
              23, 2005) fails to address new claims 27-30 on the merits.  In the Answer,            
              the Examiner asserts that claims 27-30 were, in fact, examined, and the               
              omission in the Final Rejection was the inadvertent result of a typographical         
              error (Answer 8).                                                                     
                    We find no support in the record that the claims were examined. We              
              find before us new grounds of rejection for claims 27-30, set forth for the           
              first time in the Examiner’s Answer.  Specifically, the Examiner has set forth        
              new grounds of rejection (in the Answer) for claims 27-30 as being                    
              anticipated by Chipman, and claims 27 and 28 as being anticipated by                  
              Bailey.  Appellants have anticipated the new grounds of rejection in the              
              Brief by indicating that any rejection of claims 27-30 is improper and should         
              be reversed (Br. 4).  Because Appellants have not had an opportunity to               
              traverse the new grounds of rejection on the merits, we pro forma reverse             
              the Examiner’s rejection of claims 27-30.                                             

                                 NEW GROUNDS OF REJECTION                                           
                    Pursuant to our authority under 37 C.F.R. § 41.50(b), we have                   
              sua sponte set forth new grounds of rejection for independent claim 1.                

                    The following is a quotation of the appropriate paragraphs of                   
              35 U.S.C. § 102 that form the basis for the rejections under this section made        
              in this Decision:                                                                     
                    A person shall be entitled to a patent unless –                                 
                    (e) the invention was described in (1) an application for patent,               
                    published under section 122(b), by another filed in the United States           

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