Appeal No. 1997-0521
Application No. 08/105,839
patentability as recited in 35 U.S.C. § 132 thereby providing appellant with notice and to
allow appellant to take action as deemed appropriate.
Whenever, on examination, any claim for a patent is rejected, or any
objection or requirement made, the Commissioner shall notify the applicant
thereof, stating the reasons for such rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of his application; and if after
receiving such notice, the applicant persists in his claim for a patent, with or
without amendment, the application shall be reexamined. No amendment
shall introduce new matter into the disclosure of the invention. (July 19,
1952, ch. 950, §1, 66 Stat: 801.)
In the answer, the examiner merely responds that the claims "merely repeated steps of the
rejected claims 1 - 10 and therefore found it not necessary to specifically spell out the
rejection.” (See answer at page 12.) Whether the examiner finds it “necessary” or not, the
Commissioner/Examiner is required to set forth both the statutory basis and
the reference(s) upon which each claim is denied patentability. Here, there are three
different combinations of references applied against claims 1-10, and we will not
speculate as to which one the examiner bases his rejection. Therefore, we cannot sustain
the examiner’s asserted rejection of claims 11-15.1
1We have reviewed the prior art to Tolin alone with respect to claims 11 and 12 and find that Tolin
does not teach or suggest an automated method or apparatus of translating computer programs as
discussed above with respect to claim 1. We note that claim 12 is the broadest claim. We further note
that Bowles teaches a computer language translation system.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007