Ex parte RIEK et al. - Page 3




                 Appeal No. 97-2600                                                                                                                     
                 Application 08/500,091                                                                                                                 



                                   The examiner has relied upon the following refer-                                                                    
                 ences                                                                                                                                  
                 to support a rejection under 35 U.S.C. § 112, first paragraph:                                                                         
                 Alvord                   207,932                 Sept. 10,                                                                             
                 1878                                                                                                                                   
                 Auburn                 4,191,191                 Mar.   4,                                                                             
                 1980                                                                                                                                   


                                   Claims 16-25, 27, 29-37, 39 and 41-44 stand rejected                                                                 
                 under 35 U.S.C. § 112, first paragraph, as being based upon an                                                                         
                 original disclosure which fails to provide descriptive support                                                                         
                 for the subject matter now being claimed.                                                                                              
                                   The examiner’s rejection is explained on pages 4 and                                                                 
                 5 of the Office action mailed December 19, 1995 (Paper No.                                                                             
                 8).   The arguments of the appellants and examiner in support2                                                                                                                                
                 of their respective positions may be found on pages 7-21 of                                                                            
                 the brief, pages 1-4 of the reply brief, pages 4-11 of the                                                                             
                 answer and    pages 2-4 of the supplemental answer.  As evi-                                                                           

                          2Page 4 of the answer states that the “rejection is set                                                                       
                 forth in the prior Office actions paper numbers 8 and 12.”                                                                             
                 Such a procedure by the examiner is totally improper and                                                                               
                 inappropriate.  The Manual of Patent Examining Procedure                                                                               
                 (MPEP) § 1208  (6th ed., Rev. 2, Jul. 1996) expressly provides                                                                         
                 that incorporation by reference may be made only to a single                                                                           
                 other action.                                                                                                                          
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