Ex parte ASCHENBECK et al. - Page 3





                     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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