Appeal No. 2006-1820
Application No. 08/889,440
14-18, are really unnecessary and immaterial and merely serve to obfuscate, rather than clarify
the issues before us. The examiner may rest assured that we make our decisions on the evidence
before us, and not on any perceived attitudes of the parties involved; that we will consider the
“version” of a reference that the examiner bases the rejection on; and that we are well aware of
the law relating to a prima facie case and 35 U.S.C. § 103. The answer would better serve us if
the examiner got right to the point, succinctly stating the grounds of rejection, the rationale
therefore, particularly identifying specific portions of the prior art alleged to teach specific claim
limitations, particularly specifying what about the claims is indefinite with a full explanation as
to why it is deemed indefinite in rejections under 35 U.S.C. § 112, second paragraph, and
particularly specifying what about the claims is non-enabling or without proper written
description, in rejections under 35 U.S.C. § 112, first paragraph.
Moreover, in rejections based on prior art, it would be most helpful if the examiner
would limit his/her rejections to what is considered the most relevant, and best, art available to
make the point alleged. For example, in rejecting claims 1, 3-9, 11-20, 22-26, and 28-31, under
one of the plurality of rejections based on 35 U.S.C. § 103, the examiner bases the rejection on
any one of four individual references, each one in view of either one of three additional
references, which constitutes, in reality, twelve different rejections of the same claims. This is in
addition to the other three different rejections of claims 1, 3-9, 11-20, and 22-31 under 35 U.S.C.
§ 103, and the additional two other rejections of claims 1, 3-9, 11-20, and 22-31 under 35 U.S.C.
§ 103. One must question whether there might be one or two strongest rejections, based on the
prior art, which the examiner could have made in lieu of the seventeen different rejections made
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