Appeal No. 95-5066
Serial No. 07/931,330
THE ISSUES4
The issues present for review are:
(1) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Hamuro, Ketcham and Dubuisson;
(2) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Kaun ; 5
(3) whether the examiner erred in rejecting claims 1 and 2 under 35 U.S.C. § 103 as
unpatentable over Kaun in view of Kotchick and/or Huebner;
(4) whether the examiner erred in rejecting claim 3 under 35 U.S.C. § 103 as unpatentable
over Kaun, Kotchick and Huebner in view of Buckley ; 6
4The last Office action (paper no. 16, mailed September 8, 1994) also included
(i) a rejection of claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Berger (U.S. Patent 4,499,149)
and Reibach (U.S. Patent 3,616,200);
(ii) a rejection of claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in veiw of
Kotchick and/or Huebner;
(iii) a rejection of claim 3 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in view of Kotchick
and/or Huebner taken further in view of Buckley;
(iv) a rejection of claims 5-7 under 35 U.S.C. § 103 as unpatentable over Berger and Reibach in view of
Kotchick and/or Huebner taken further in view of Italplastic; and,
(v) a rejection of claim 2 under 35 U.S.C. § 112, fourth paragraph, as failing to further limit the subject matter
of the previous claim, i.e., claim 1.
In that these rejections were not repeated in the Substitute Answer, they are presumed to have been withdrawn. Ex
parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
5There is an apparent typographical error on page 1 of the Substitute Answer where claims 1-3 are rejected
as unpatentable over Kaun since both the last Office action (paper no. 16, mailed September 8, 1994 page 6) and
page 6 of the Substitute Answer both reject claims 1 and 2 as unpatentable over Kaun. In any event, it does not
affect the outcome of our decision.
6The last Office action (paper no. 16, mailed September 8, 1994) also included a rejection of claim 3 under
35 U.S.C. § 103 as unpatentable over Kaun in view of either Kotchick or Huebner, each taken further in view of
Buckley. In that these rejections were not repeated in the Substitute Answer, they are presumed to have been
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