Appeal No. 1999-0329
Application No. 08/212,818
1. Improper Examiner’s Answer.
The examiner sets forth two separate rejections on page 4 of the
Examiner’s Answer. The examiner then states (Examiner’s Answer, page 4)
“[t]hese rejections are set forth in prior Office Actions, Paper Nos. 13, 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.”
2. The rejections set forth in the Examiner’s Answer are new to this record.
Page 2 of the Final Office Action presents two grounds of rejection:
1. Claims 1-5, 7-8, [and] 16-26 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Tsuda et al. and Rose et al.
4,936,974 and Rose, Jr. 5,180,479 in view of Kobayashi et al.
2. Claim[s] 6, [and] 9-15 are rejected under 35 U.S.C. § 103
as being unpatentable over Rose, Jr. 5,180,479 and Rose et
al. 4,936,974.
We emphasize the use of the word “and” in each rejection, clearly
suggesting that the references are to be combined with each other. In contrast,
the Examiner’s Answer presents the following two grounds of rejection:
1. Claims 1-5, 7-8, [and] 16-26 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Tsuda et al. or Rose et al.
4,936,974 or Rose, Jr. 5,180,479 in view of Kobayashi et al.
2. Claim[s] 6, [and] 9-15 are rejected under 35 U.S.C. § 103
as being unpatentable over Rose, Jr. 5,180,479 or Rose et al.
4,936,974.
2
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