Ex parte TOYODA - Page 5




          Appeal No. 1998-2818                                                        
          Application 08/550,521                                                      


                    Examiners may incorporate in the answer their                     
               statement of the grounds of rejection merely by                        
               reference to the final rejection (or a single other                    
               action on which it is based, MPEP  706.07).  Only                     
               those statements of grounds of rejection as appear                     
               in a single prior action may be incorporated by                        
               reference.  An examiner’s answer should not refer,                     
               either directly or indirectly, to more than one                        
               prior Office action.  Statements of grounds of                         
               rejection appearing in actions other than the                          
               aforementioned single prior action should be quoted                    
               in the answer.  The page and paragraph of the final                    
               action or other single prior action which it is                        
               desired to incorporate by reference should be                          
               explicitly identified.  [Emphasis added.]                              
               As is clear from the above, the examiner’s answer in this              
          application does not comply with, inter alia, the requirement               
          of MPEP  1208 that only those statements of grounds of                     
          rejection as appear in a single prior action may be                         
          incorporated by reference, and the requirement of MPEP  1208               
          that an examiner’s answer should not refer, either directly or              
          indirectly, to more than one prior office action.  We should                
          not have to continually refer to appellant’s brief, previous                
          office actions, and papers previously filed by appellant in                 
          order to determine the examiner’s position with respect to the              
          obviousness issues raised in this appeal.  In the interest of               
          judicial economy, we shall, in this instance, proceed to                    

                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007