Appeal No. 2001-1164 Page 4
Application No. 08/293,745
THIRD DECLARATION OF DARYL BARNETT, executed January 8, 1998; and (8) the
Van Dyke Declaration, executed March 17, 1992.
On consideration of the record, including the above-listed materials, we reverse
the examiner's prior art rejection.
Discussion
Review of the examiner's position in this case has proven difficult. In the
amended Brief (Paper No. 44), applicant clearly and unambiguously argues the
patentability of claims separately. See the amended Brief, section VII, where applicant
sets forth nine groups of claims; and see section VIII E, where applicant presents
separate arguments with respect to the patentability of each group of claims. The
examiner's position, that applicant "fails to provide any reason why the grouped claims
are separately patentable over the prior art of record," is factually incorrect. See the
Examiner's Answer (Paper No. 45), page 2, fourth paragraph. Applicant strenuously
pursues this point in the Reply Brief (Paper No. 46), pages 1 and 2, disputing the
examiner's conclusion with respect to the grouping of claims. In a communication
mailed by the examiner October 12, 2000 (Paper No. 47), the examiner states that "[t]he
reply brief filed August 1, 2000 has been entered and considered." On this record,
however, we have no statement from the examiner responding substantively to
applicant's separate arguments with respect to nine groups of claims.
Compounding the examiner's error, with respect to grouping of the claims, is the
treatment of rebuttal evidence attached to the Reply Brief. Specifically, applicant has
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