Ex parte ADLER - Page 14




          Appeal No. 96-1225                                                          
          Application 08/107,696                                                      


          the subject matter of appellant’s claims 5, 7-13, 15, 16, 19-               
          21 and 23.  The examiner points out (answer, page 5) that JP                
          ‘189 discloses that the temperature between temperature                     
          changes is maintained for a predetermined time (page 8, lines               
          19-23), but does not explain why this disclosure would have                 
          fairly suggested, to one of ordinary skill in the art,                      
          maintaining the temperature constant during the cleaning as                 
          required by appellant’s claims 5, 13, 15, 16 and 19-21.  The                
          examiner states that the limitations of claims 1, 3, 5-13, 15,              
          16 and 18-21 are disclosed in JP ‘189 and either cites column               
          numbers and line numbers in the reference or refers us to the               
          document in general (answer, page 6), but does not                          
          specifically discuss the content of the relied-upon                         
          disclosures.                                                                
               The examiner should address each limitation of every                   
          rejected claim and specifically explain why the portions of                 
          the references which the examiner relies upon disclose or                   
          suggest each limitation.                                                    
                                      DECISION                                        
               The rejections of claims 1, 3, 5-11, 13, 15, 16 and 18-23              
          under 35 U.S.C. § 112, second paragraph, as being indefinite                
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