Appeal 2007-1228
Application 10/150,458
1 DISPOSITION OF THE APPEAL
2 The subject matter of narrow claim 6-9 (with claims 7-9 depending
3 directly or indirectly from claim 6) would not have been obvious over the
4 prior art relied upon by the Examiner. Accordingly, we will reverse the
5 rejections of claim 6-9.
6 As a result of PTO practice relating to an election of species,
7 claims 6-9 appear to be patentable over the prior art, the Examiner will
8 continue examination by looking into whether the non-elected species are
9 patentable over the prior art. Whether applicable additional prior art will be
10 found during further examination is not something we can know at this time.
11 Accordingly, it may turn out that the broader claims on appeal and claims
12 directed to the non-elected embodiments could be unpatentable over the
13 prior art. We think that the proper course of action is to vacate the prior art
14 rejections of claims 1-5 andremand to the Examiner so that the Examiner
15 can feel free to apply any prior art rejection against claims 1-5, or for that
16 matter any other claims, based on any additional prior art which may be
17 found. We wish to make clear that nothing in this opinion should be
18 construed as limiting the Examiner's ability to administratively handle
19 further examination in any manner which the Examiner considers
20 appropriate. Any doubt as to whether our opinion limits the Examiner's
21 ability to take further action should be resolved in favor of the Examiner
22 being able to take the action. Our mandate should be construed very
23 narrowly.
24 No time period for taking any subsequent action in connection with
25 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
26
27 REVERSED-IN-PART and VACATED AND REMANDED-IN-PART
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