Appeal No. 2005-0784
Application No. 10/138,315
As an initial matter, we are compelled to advise the
examiner and his appeal conferees that the above quoted mode of
exposition used in the rejection advanced on this appeal is
unacceptable. This is because the examiner has compared the
method disclosed by Lyon to the method claimed by the appellants
via terminology distinct from the claim language. For example,
in his attempt to express the manner in which claim 26
distinguishes over Lyon, the examiner states that “Lyon . . .
does not teach forming a compact booklet by performing a 3rd
folding operation” (id., at page 4). However, the appealed claim
26 method is not defined in terms of a “folding operation.”
When an examiner addresses patentability issues by using
terminology which differs from the claim language, a potential is
created for obfuscating rather than crystallizing these
patentability issues. Under other circumstances, the possibility
of obfuscation might be so high as to necessitate remand of the
application in order to protect the administrative due process
rights of the appellants. In this case, no such remand is
necessary because, notwithstanding the inappropriate mode of
exposition used by the examiner and sanctioned by his appeal
conferees, it is clear that the references applied in the
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