Appeal No. 1998-0241 Page 3
Application No. 08/465,373
3. Claims 8 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Troth.2
Reference is made to the brief (Paper No. 18) and the final rejection and answer (Paper3
Nos. 7 and 19) for the respective positions of the appellants and the examiner with regard to
the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art reference, and to the respective
positions articulated by the appellants and the examiner. As a consequence of our review, we
make the determinations which follow.
2We interpret the last sentence on page 2 of the answer (Paper No. 19) as a statement that the 35 U.S.C.
§ 103 rejection of claims 1, 2, 4 and 8-11 set forth in the final rejection (Paper No. 7, page 4) is withdrawn as to
claims 1, 2, 4, 9 and 10. Based on the record as a whole, it is apparent to us that the examiner's statement, on page
3 of the answer, "[s]ome dependent claims are still rejected under 35 U.S.C. § 103, but since the claims stand or fall
together, the rejection is not an issue" indicates that dependent claims 8 and 11 remain rejected under 35 U.S.C.
§ 103 as being unpatentable over Troth for the reasons cited on page 4 of the final rejection. The examiner's
omission of this rejection in the Grounds of Rejection section of the answer appears to us to be based on the
examiner's mistaken impression that it is not necessary to explicitly restate in the answer rejections of dependent
claims which are not separately argued apart from the independent claim from which they depend. In any event, as
the appellants' brief (Paper No. 18, page 4) identifies the patentability of claims 8 and 11 under 35 U.S.C. § 103 as
an issue in this appeal, the appellants would not appear to be prejudiced by our interpretation.
3All references to the brief in this decision allude to the substitute brief filed July 21, 1997 (Paper No. 18).
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