Appeal 2007-1958
Application 11/130,940
The two rejections of the 37 claims appealed set forth before us in the
Answer appear not to be consistent with 37 C.F.R. § 1.104 and MPEP § 706.
Moreover, MPEP § 1207.02, relating to the requirements of an Examiner’s
Answer, also appears not to have been followed.
It is noted that once a prima facie case has been established by the
Examiner, the Appellant is free to choose [a] representative claim[s] to argue
on appeal. The Examiner, however, must still set forth in the Answer a line
of reasoning and a correlation of the disclosed features and the text of each
piece of prior art relied upon to reject each claim on appeal in such a manner
as to present a prima facie case of anticipation. This essential analysis has
simply not been done here. As a result, the Examiner has failed to establish
a prima facie case of anticipation under either §§ 102(b) or (e).
Since the reversal of each stated rejection of all claims on appeal in
this appeal is based upon a procedural basis by failing to establish a prima
facie case of anticipation of each claim on appeal, from our perspective, the
Examiner is free to reinstitute a rejection of the claims on appeal in this
appeal based upon either or both references relied upon or any additional or
different prior art.
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