Appeal No. 2002-2283
Application No. 08/882,513
being unpatentable over Hayase et al. (CA 111:153338 abstract of
JP 63227552) for the same reasons set forth in office action
mailed in paper no. 14 and 16, dated 3/11/99 and 1/11/99"
(Paper No. 21/22). We decide this appeal with trepidation.
We are generally disappointed by its presentation.
Preliminary Remarks
Examiner’s Answers should clearly and completely present the
PTO’s case for unpatentability of the subject matter appellants
claim. They should consider and respond to the arguments expressed
in appellants’ briefs. Here, the Examiner’s Answer is markedly
deficient. When the smoke clears, we find an inadequate
explanation why applicant’s claims are unpatentable.
A. Several problems with the Examiner’s Answer are apparent.
The inaccuracies, oversights, and omissions in the Examiner’s
Answer do not give the reviewer confidence that the substantive
issues of claim construction and obviousness have been adequately
addressed. We particularly note the following in the hope that the
examiner will be more attentive to “formal issues” in the future.
1. The status of Claim 32 is unclear. Although the
Examiner’s Answer states that “Claim 32 filed after Final rejection
was not entered” (EA 2) and “Claim 32 was not entered and is not
under consideration” (EA 3), we find that Claim 32 was entered of
2
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