Appeal 2007-0138
Application 10/039,459
The Examiner advanced three grounds of rejection in the Final Office
Action:
1. Claims 1-9 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Holder (WO 99/66108);
2. Claims 10 and 14 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Holder in view of Falster (US 5,919,302) and Kim (US
5,942,032); and
3. Claims 11-13 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Holder in view of Falster and Kim and further in view of
Luter (US 5,922,127). (See the Final Office Action of January 14, 2004.)
Appellants’ appeal was taken from all three rejections. Each ground
of rejection is listed in the “Grounds of Rejections to be Reviewed on
Appeal” section of the Brief (Br. § vi) and each is treated under a separate
heading in the “Arguments” section (Br. § v).
However, it is not clear from the Answer whether all three rejections
are maintained on appeal. On the one hand, § (6) of the Answer states that
the Appellants’ statement of the grounds of rejection to be reviewed on
appeal is correct. This implies that all three grounds of rejection are
maintained. On the other hand, only one of the four references, Holder, is
listed as evidence relied upon (Answer § (8)) and only one of the rejections
is reproduced in the Answer, the rejection of claims 1-9 over Holder
(Answer § (9)).
The Examiner must clarify the record. If the rejections not
reproduced in the Answer have been withdrawn, the Examiner must file a
communication so stating. If, on the other hand, the rejections were
intended to be maintained, the Examiner must file a substitute Answer
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Last modified: September 9, 2013