Appeal 2007-3294
Application 10/354,220
We remand the application to the Examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. § 41.50(a)(1) (2007);
Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 5,
August 2006).
The Examiner changed the statutory basis of the ground of rejection
of claims 2 through 11 as anticipated by United States Patent 5,965,257 to
Ahluwalia, issued October 12, 1999, from 35 U.S.C. § 102(e) to 35 U.S.C.
§ 102(b) in the Answer in response to Appellant’s contention in the Brief
that the former statutory provision was inappropriate “because the Appellant
is the inventor of the Ahluwalia reference, and the instant application and the
cited Ahluwalia reference are commonly owned” (Answer 2-3 and 3-4; Br.
8-9 and n. 1, citing 35 U.S.C. § 102(e)(2)). In entering this new ground of
rejection in the Answer, the Examiner denied benefit of priority for appealed
claims 2 through 11 to parent Application 09/663,225 (parent Application),
filed September 15, 2000, under 35 U.S.C. § 120 on the basis the parent
Application does not “provide support or enablement” under
35 U.S.C. § 112, first paragraph, “for one or more claims of this application”
because “no surfactant or microcells are discussed in the prior filed
application” (Answer 2-3). Independent claim 2, on which all other claims
directly or ultimately depend, encompasses a fire resistant fabric material
comprising at least a substrate coated with a structural material comprising,
among other things, a prefabricated microcell component, a surfactant
component, and surfactant-generated microcells.
Appellant contends the parent Application, which matured into U.S.
Patent 6,586,353, claims benefit of Provisional Application 60/168,057
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