Appeal No. 1999-1731
Application 08/411,815
the combined disclosures of cited references are insufficient to support a conclusion of
obviousness of claims containing that limitation. We shall not belabor the record with
extensive comment in this case. Rather, we refer to the position succinctly expressed in
applicants’ Appeal Brief, explaining why the above-cited references would not have led a
person having ordinary skill in the art to claims 24 through 34 which include clause (ii) or to
claims 46 through 56 which include clause (i)(2). For the reasons set forth in the Appeal
Brief, we agree that claims 24 through 34 and 46 through 56 patentably distinguish over
the cited prior art.
We also note the following as a matter of procedure. The § 103 rejection is said to
be based on a combination of references (Answer, page 4, last paragraph). Nevertheless,
in the Answer, the examiner does not include an explanation supporting this rejection in the
manner outlined in § 706.02(j) of the Manual of Patenting Examining Procedure, entitled
“Contents of a 35 U.S.C. 103 Rejection.” Rather, the examiner bundles together four
references which, in his opinion, individually suggest various elements of the claimed
invention. The examiner discusses Mathiowitz, Glajch, Erbel, and Unger individually and
sequentially; and concludes that those references would have led a person having ordinary
skill in the art to the claimed invention. That is not enough. The examiner fails to set forth
the difference or differences in any claim over the applied reference(s); the proposed
modification of the applied reference(s) necessary to arrive at the claimed subject matter;
and an explanation why one of ordinary skill in the art at the time the invention was made
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007