Appeal No. 2001-1164 Page 6
Application No. 08/293,745
and the acknowledged state of the prior art. The examiner's statement of rejection,
however, is short on specifics. As best we can judge, the examiner has not applied the
teachings of any reference or references against any individual claim with a reasonable
degree of specificity. Conspicuous by its absence from the Examiner's Answer (Paper
No. 45), is application of the cited prior art to any individual claim. This is particularly
egregious where, as here, applicant has presented extensive argument with respect to
nine groups of claims, and relies on extensive evidence of non-obviousness in the
record. See the instant specification; the DECLARATION OF DARYL BARNETT,
executed August 19, 1994; the SECOND DECLARATION OF DARYL BARNETT,
executed October 14, 1995; the THIRD DECLARATION OF DARYL BARNETT,
executed January 8, 1998; and the Van Dyke Declaration, executed March 17, 1992.
Having carefully reviewed the Examiner's Answer, we find that the examiner's
position with respect to applicant's rebuttal evidence may best be summarized as
follows: "[a]bsent claims commensurate with the showing of unexpected benefits, or a
showing reasonably commensurate with the instant claims, such claims remain properly
rejected under 35 USC 103" (Paper No. 45, page 13). That critique of rebuttal evidence
is less than satisfactory because (1) the examiner has not explained with a reasonable
degree of specificity why any claim or claims would have been prima facie obvious
under 35 U.S.C. § 103 based on the cited prior art; and (2) the examiner has
essentially ignored arguments presented in applicant's Appeal Brief pertaining to the
separate patentability of nine groups of claims. On this record, we think it fair to say
that the examiner's shotgun statement of rejection and broad-brush critique of
applicant's rebuttal evidence do not come to grips with the specific categories of claims
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007