Appeal No. 1999-0425
Application No. 08/788,969
obvious over the teachings of the MacKenzie and Pardue references, as explained in
paper 10.”
First, this statement of rejection does not make it clear whether the rejection is based
on some combination of MacKenzie and Pardue or on either one of these references,
taken alone. The response to appellant’s arguments, appearing on pages 3-5 of the
answer, would appear to indicate that the examiner views either one of the references, by
itself, as sufficient to make the instant claimed subject matter obvious, within the
meaning of 35 U.S.C. 103. This appears so because, at page 4 of the answer, the
examiner sets forth four separate paragraphs stating that “Both references show…” The
answer does not explain, in any detail, ho w the disclosure of each reference corresponds
to what is claimed. The examiner merely states, in conclusion, at page 5 of the answer,
that “In summary, all of applicant’s improvements are part of the prior art.”
Moreover, while the examiner refers us to “paper 10” for an explanation of the
rejection, reference to this paper leads us further back to “the rejection of paper 7.”
Reference to “paper 7” finds that the only statements regarding the references state, in
toto,
The concept of the inve ntion appears to be disclosed in the MacKenzie…
reference…Both capacitive spike generation and impedance grounding are
disclosed…The Pardue reference also shows the monitoring turn of the
claims in similar role. Pardue discloses the additional feature of using the
monitoring current to calibrate the breaker sensitivity threshold.
Initially, we note that MPEP 1208 permits the examiner to incorporate in the answer
the statement of the grounds of rejection merely by reference to the final rejection or a
single other action on which it is based. The examiner is clearly in violation of this
section of the manual by incorporating several actions and, even then, has never referred
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