Appeal No. 2001-1933
Application No. 08/940,058
Answer for the examiner's reasoning in support of the rejection, and to the appellants’
Brief and Reply Brief, for arguments thereagainst. As a consequence of our review, we
make the determinations which follow.
Prior to discussion of the rejections in the application, we note that the examiner
has made review of the record difficult for the following reasons. First, the examiner
has referenced multiple prior papers (Paper Nos. 8 and 10) in setting forth the
statement of rejection. Answer, page 4. Manifestly, this is improper. In relevant part,
the Manual of Patent Examining Procedure (MPEP) § 1208 (6th ed., July 1996), states
“[a]n examiner’s answer should not refer, either directly or indirectly, to more than one
prior Office action.”
Secondly, the examiner has not relied or obtained a full text copy of the cited
reference articles abstracted. Obviousness determinations are fact-intensive. It stands
to reason that full text documents, whether they be English language translations of
foreign language documents or full text documents will provide more facts. It is not
apparent why the examiner and appellants have satisfied themselves with determining
patentability under 35 U.S.C. § 103 on less than a complete factual record. We have
obtained the full copies of the abstracted articles relied on by the examiner and render
this decision based on the full text articles. Finally, the examiner has failed to provide
an indication as to why individual claims appropriately argued by appellants are
unpatentable, and has failed to respond to appellants argument as to why the claims of
the application stand or fall separately. Although any one of the above difficulties would
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