Appeal No. 2006-0796 Page 5
Application No. 09/607,751
effect at the time the examiner’s answer was written, requires
that a rejection under 35 U.S.C. § 102 point out where all of the
specific limitations recited in the rejected claims are found in
the prior art found in the rejection. This MPEP section
additionally requires that:
(e) For each rejection under 35 U.S.C. 102 . . . where
there are questions as to how limitations in the claims
correspond to features in the prior art even after the
examiner complies with the requirements of paragraphs
(c) and (d) of this section, the examiner shall compare
at least one of the rejected claims feature by feature
with the prior art relied on in the rejection. The
comparison shall align the language of the claim
side-by-side with a reference to the specific page,
line number, drawing reference number, and quotation
from the prior art as appropriate.3
From our review of the cited MPEP section, we find that the
examiner’s reprinting of the language of claim 1, almost
verbatim, followed by a broad reference to figure 1 and
paragraphs 10-13, 34 and 35, does not comply with the require-
ments of the MPEP for the content of an examiner’s answer. In
particular, in view of appellant’s questioning (brief, pages 3-5)
as to how limitations in the claims correspond to features of the
prior art, the failure to provide appellant with a side-by-side
comparison of the language of a claim with reference to the
3Similar language currently appears in MPEP § 1207.02.
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