Ex parte RUSSELL et al. - Page 13




                     Appeal No. 1998-3385                                                                                                                                              
                     Application No. 08/601,551                                                                                                                                        



                     the second group.  This claim is rejected on the same basis as                                                                                                    
                     claims                                                                                                                                                            
                     30-37 and 42-43.   As discussed above, the Examiner fails to9                                                                                                                               
                     provide motivation for combining Borovoy, Vu/Post, Woolsey,                                                                                                       
                     and Lisle.  Therefore, the rejection of claim 40 on this                                                                                                          
                     combination must fail.                                                                                                                                            


                                In view of the foregoing, we have not sustained the                                                                                                    
                     rejection of claims 30, 40, and 42-43 nor of claims 31-37                                                                                                         
                     which depend from claim 30.  Accordingly, the Examiner's                                                                                                          
                     decision is reversed.                                                                                                                                             
                                                                                  REVERSED                                                                                             


                                                     ERROL A. KRASS                                                   )                                                                
                                                     Administrative Patent Judge                                      )                                                                

                                9  While paragraph 1, page 3 of the answer lists claim 40                                                                                              
                     as being rejected over Borovoy in view of Woolsey, Lisle, and                                                                                                     
                     Vu/Post, the record fails to reflect a discussion of the                                                                                                          
                     elements of claim 40.  Likewise, the final rejection mailed                                                                                                       
                     August 12, 1997, fails to provide a basis for the rejection.                                                                                                      
                     The initial office action mailed January 2, 1997 rejects claim                                                                                                    
                     40 on the same basis as that provided for claims 30-37.                                                                                                           
                     However, as claim 40                                                                                                                                              
                     differs significantly in scope from claims 30-37 and 42-43,                                                                                                       
                     the basis of the rejection for this claim remains unclear.                                                                                                        
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