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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