Appeal No. 2002-0348
Application No. 09/176,416
disclosed by Halverson at pages 3-4 of the answer and to identify
various claim recitations alleged to be disclosed by DeBusk at
pages 4-6 of the answer, the examiner never identifies which
limitations of which claims are being alleged to be disclosed by
these references. For example, while the examiner recites
various “processing steps,” e.g., “withdrawal of said at least
one drug...” instant claim 1 does not have such a limitation.
The examiner needs to be very specific as to how each limitation
of each claim is alleged to be taught by the applied references.
As the rejection is currently set forth in the answer, we cannot
identify how the examiner is applying the references against each
individual claim.
Moreover, while the examiner lists many claim elements as
being disclosed by Halverson and many claim elements as being
disclosed by DeBusk, the examiner’s rejection never explains how
or why these references can or should be combined. Thus, even if
all that is alleged by the examiner is taken as true, the
examiner still has not established a prima facie case of
obviousness because the mere identification in the prior art of
all of the individual claim elements, assuming, arguendo, that
the examiner has found all of the elements, still does not
establish obviousness, within the meaning of 35 U.S.C. 103. The
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