Reexamination Control No. 90/005,742
Patent 5,253,341
1 contrary to In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999), an issue we
2 address below.
3 C. The state of the record
4 As already noted, the Brief asserts that the rejections set forth in the Final Action were
5 addressed in appellant’s responses to earlier Office actions and provides the aforementioned
6 table correlating the page numbers of the Second Koopman Declaration (which discusses the
7 Third Action) with the paragraph numbers of the Final Action. Brief at 57-58. The examiner did
8 not object to the form of the Brief and thus effectively treated the Second Koopman Declaration
9 as incorporated by reference therein, as will we.
10 Because the Office action that is discussed in the Second Koopman Declaration is the
11 Third Action, we are keying our discussion of the rejections to the paragraph and page numbers
12 used in the Third Action, which appear in bold in the Second Koopman Declaration. See, e.g.,
13 2d Koopman Decl. at 4 (citing Office Action ¶ 6, Page 8). Each cited paragraph and page
14 number of the Third Action is followed by numbered paragraphs (hereinafter “testimony
15 paragraphs”) that (a) reproduce the corresponding passages from the First Koopman Declaration
16 and the examiner’s responses thereto and (b) give Dr. Koopman’s comments on the examiner’s
17 responses. Thus, the citation of Office Action ¶ 6, Page 8 at page 4 of the Second Koopman
18 Declaration is followed 15 at pages 4 to 7 by testimony paragraphs 8. These testimony
19 paragraph numbers can then be used to locate the corresponding discussion in the Final Action
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007