Appeal No. 2001-2656 Page 10
Application No. 09/208,514
Cunningham and Platts in such a manner as to render the subject matter of claim 1
obvious. Therefore, as was the case with claim 1, the rejection of claim 20 cannot be
sustained.
The Double Patenting Rejections
Claims 1-10 stand rejected under the judicially created doctrine of obviousness-
type double patenting “over claims 1-20 of U.S. Patent No. 5,950,895 [Zakarin] in view
of Cunningham, and further in view of Platts,” and claim 20 “over claims 1-20 of U.S.
Patent No. 5,950,895 [Zakarin] in view of Cunningham, and further in view of Platts . . .
[and] Pedersen” (Answer, pages 6 and 7). At the outset, we note that the appellant
rightly has protested that the examiner has failed to explain these two rejections in the
manner required by Section 804 of the Manual of Patent Examining Procedure, in that
he has not compared with particularity the subject matter recited in each of the
appellant’s eleven claims with that which is recited in the claims of the ‘895 patent
(Brief, pages 13 and 14). Thus the appellant, and the Board, are left to their own
devices to speculate how the examiner would have constructed the rejection of each of
the twelve claims before us on appeal. This is unacceptable, and in the usual such
case would necessitate that the application be remanded to the examiner for statement
of the rejections in the manner required by the MPEP.
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