Appeal No. 2002-1395 Page 17
Application No. 08/789,702
38, which depend therefrom; of claim 39; and of claims 40-51, which depend therefrom.
"The PTO Rules of Practice require the examiner to cite only what he considers
the 'best references.'" E.I. duPont de Nemours & Co. v. Berkley & Co., 620 F.2d 1247,
620 F.2d 1247, 1266-67, 205 USPQ 1, 16 (8th Cir. 1980). "The examiner is not called
upon to cite all references that may be available, but only the 'best.'" M.P.E.P. § 904.03
(8th ed., rev. 1 Feb. 2003) (quoting 37 C.F.R. § 1.104(c)(2002)). "Multiplying
references, any one of which is as good as, but no better than, the others, adds to the
burden and cost of prosecution and should therefore be avoided." Id.
Here, the examiner's treatment of Rostoker and Van Dyke evidences that the
references are no better than Kirsch. The examiner should avoid such multiplication of
references.
CONCLUSION
In summary, the rejection of claims 1-12, 16-47, and 51 under § 112, ¶ 2, is
reversed, while the rejection of claims 13-15 and 48-50 under § 112, ¶ 2, is affirmed.
The rejection of claims 1-29 and 32-51 under § 102(e) is affirmed, while the rejection of
claims 30 and 31 under § 102(e) is reversed. The rejection of claims 1-51 under
§ 103(a) is also reversed.
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