Ex parte ONISHI et al. - Page 3




          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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