Appeal No. 95-2440
Application 07/705,726
See 37 CFR § 1.106(c); In re Nomiya, 509 F.2d 566, 570-71, 184
USPQ 607, 611-12 (CCPA 1975).
The examiner has rejected claims 46 through 50, 52, 57
through 61, 63 and 72 through 98 under 35 U.S.C. § 102(a) as
being anticipated by appellants' admission on pages 19-21 of
the specification. The examiner, however, did not indicate
what portions of pages 19 through 21 of the "admitted prior
art" corresponded to the claimed limitations. Nor did the
examiner indicate how "admitted prior art" was established.
See, e.g, In re Nomiya, supra for the test for "admitted prior
art".
In rejecting the above claims under § 102(a), the
examiner acknowledged that they "do not stand or fall
together." See Answer, page 2. In other words, the examiner
has agreed to treat the claims at issue separately. The
examiner, however, did not discuss the limitations of any of
the claims at issue. Nor did the examiner discuss any
particular portion of "admitted prior art" which supposedly
taught each and every claim limitations. All we have is the
examiner's general reference to pages 19 through 21 of the
specification. It appears that the examiner is asking us to
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