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
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