Appeal No. 1999-2776
Application No. 08/714,249
unpatentable over Rogahn in view of Danielak; claim 12 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Knerr in view of Sasse; while claims 1, 2, 7 and 8
additionally stand rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 5 of U.S. Patent No.
5,620,351.1
Rather than attempt to reiterate the examiner's full
1 While the examiner has not expressly repeated all of the
rejections applicable to the claims before us on appeal in the
examiner’s answer (Paper No. 11), it is clear from a review of
the final rejection, appellant’s brief (Paper No. 10) and the
totality of the examiner’s answer (particularly section 6)
that the rejections as stated above are those that are before
us for consideration on appeal. More specifically, we note
that the rejection of claims 1, 2, 7 and 8 based on the
judicially created doctrine of obviousness-type double
patenting is still a valid rejection and is before us in this
appeal. We are at a loss to understand why all of the
applicable rejections were not repeated in the examiner’s
answer. Normally, rejections of claims which are not repeated
in the examiner’s answer are considered to have been withdrawn
by the examiner. See, for example, Ex parte Emm, 118 USPQ 180
(Bd. App. 1957). In the present case, we note that
appellant’s statement of the issues on appeal as set forth on
page 3 of the brief, with particular regard to the double
patenting rejection, in no way relieves the examiner of the
obligation to expressly state in the examiner’s answer exactly
what rejections are before the Board for review.
3
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