Appeal No. 2000-0693
Application 08/845,282
(Japanese Patent Application)
Claims 4, 8-15, 17-19, 21-57 and 59 stand rejected under
35 U.S.C. § 103 as being unpatentable over Japanese patent
document 63-169871 to Harada (JA ‘871) in view of Japanese
patent document 1-304836 to Kure (JA ‘836) and further in view
of Japanese patent document 56-127032 to Barnett (JA ‘032).3
According to the examiner, “[t]his rejection is set forth
in prior Office action, Paper No. 7 and Paper No. 17” (answer,
page 4).4 As it turns out, the examiner’s position as set
forth in the “Response to Argument” section of the answer
regarding a very relevant feature of the claimed invention is
substantially different than the positions taken in previous
office actions. Accordingly, our focus will be on the
3 The final rejection (Paper No. 17) also included a
rejection of all the then pending claims under the judicially
created doctrine of obviousness-type double patenting. This
rejection was subsequently withdrawn by the examiner. See
section 6 (“Issues”) on page 2 of the answer.
4 The procedure followed by the examiner here of
incorporating by reference more than one previous office
action in explaining the rejection is not in compliance with
Section 1208 of the Manual of Patent Examining Procedure
(MPEP), which expressly provides that incorporation by
reference may be made only to a single other action.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007