Reexamination Control No. 90/005,742
Patent 5,253,341
1 Baji, Catros, and McCalley.14 In addition, the examiner cited paragraphs 56-58 of the First
2 Koopman Declaration as support for a non-enablement rejection of claims 94, 95, 97, and 98. 3d
3 Action at 72, para. 9. The examiner did not mention the Rule 131 declarations but failed to
4 repeat and therefore implicitly withdrew15 the rejections of claims 93, 95, 96, 100, and 102-104
5 based on Yurt. However, he newly rejected claim 11 for obviousness over Yurt in view of either
6 Kandell or Gargini. Id. at 86-88, paras. 19-20. Rather than following each statement of each
7 ground of rejection with his response to the relevant parts of Dr. Koopman's testimony, the
8 examiner devotes pages 8 to 71 to a separate discussion of that testimony. That discussion
9 consists of reproducing virtually the entire First Koopman Declaration a passage at a time and
10 following each quoted passage with the examiner’s response (in bold).
11 Appellant's response16 to the third Office action was accompanied by a "Second
12 Declaration of Philip Koopman, Ph.D." ("Second Koopman Declaration"),17 which runs 200
13 pages (excluding exhibits). The length of this declaration is due to the fact that it quotes, a
14 passage at a time, virtually the entire Office action (including its quotations from the First
15 Koopman Declaration) and follows each passage with Dr. Koopman's comments.
16 The fourth and final Office action ("Final Action")18 is 265 pages long, of which pages
17 232-64 provide the statements of the rejections. The paragraph numbers the Answer assigns to
14 At page 3, the examiner also relied on Rozmanith U.S. Patent 5,179,652.
15 The examiner stated that "[e]very rejection not expressly maintained is withdrawn."
3d Action at 72, para. 7.
16 Paper No. 28.
17 Paper No. 27.
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