Appeal No. 94-1942
Application 07/773,603
The issue presented for review is whether the examiner erred
in rejecting claims 11 through 18 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Takayama, Arteca,
Paterson, Mingo-Castel and Akita.
OPINION
On consideration of the record, we reverse the prior art
rejection of claims 11 through 18.
First, in the Answer, the examiner does not set forth a
statement of the rejection under 35 U.S.C. § 103. Instead, the
examiner refers to the final rejection (Paper No. 12, mailed
March 1, 1993). Having carefully reviewed the final rejection,
pages 2 through 8, we find that the examiner's statement does not
comply with § 706.02(j) of the Manual of Patent Examining
Procedure entitled "Contents of a 35 U.S.C. 103 Rejection."
Consequently, we cannot determine with any certainty why the
examiner believes that any individual claim on appeal is
unpatentable under § 103. Suffice it to say, we agree with
appellants that the examiner has not established a prima facie
case of obviousness of the claimed subject matter.
Second, as best we can understand the final rejection, we
believe that the examiner uses appellants' claims as a blueprint
for selectively picking and choosing among various prior art
disclosures to reconstruct the claimed invention. Manifestly,
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