Appeal 2007-2047
Application 10/335,187
remand. References not being relied upon in rejecting a claim should not be
discussed in explaining the rejection of that claim. Additionally, for all
maintained rejections, the Examiner must explicitly identify the respective
portion of the applied reference disclosures which are thought to satisfy each
of the limitations of the argued claims on appeal.
In this regard, the Examiner must explain where each limitation of
each contested claim that is asserted to be taught by Carey can be found in
Carey by pointing to column and line and/or drawing figure for each taught
limitation, if that reference continues to be relied upon by the Examiner as
the primary reference. Furthermore, the Examiner must set forth how each
contested rejected claim differs from Carey in any obviousness rejection
maintained. Then, the Examiner must articulate why it would have been
obvious to one of ordinary skill in the art to modify the Carey process based
on the combined teachings of the references relied upon so as to arrive at the
subject matter of each contested claim rejected under § 103(a). Of course,
the Examiner must explicitly respond to each argument presented by
Appellant in the Briefs by explaining with specificity why the argument is
considered to be unpersuasive. This is necessary so that we may better
understand the Examiner’s positions regarding the prior art rejections.
Of course, upon review of the claimed subject matter and the
disclosure of the currently applied references, the Examiner may determine
some claims are allowable or that reopening prosecution is appropriate to
introduce new evidence and grounds of rejection based thereon.
An appeal conference must be convened to discuss the merits of the
rejections and positions taken by the Examiner in this application prior to
submitting any Supplemental Answer. Any such Supplemental Answer
7
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013