Reexamination Control No. 90/005,742
Patent 5,253,341
1 and the Answer. Continuing with the same example, the examiner's responses to testimony
2 paragraphs 8 to 15 appear in the Final Action at pages 6-9 and in the Answer at pages 40-43.25
3 We have looked only to the examiner’s statements of the rejections (i.e., not to his
4 discussions of the Koopman declarations) for statements of the prima facie cases for anticipation
5 and obviousness.
6 D. Appellant's due process argument
7 In addition to arguing the merits of the various rejections, appellant asserts that
8 the examiner's practices of repeatedly iterating past assertions and
9 arguments verbatim (sometimes repeating absolutely identical rejections
10 to the same claims in the same office action); refusing even to
11 acknowledge much of the evidence submitted by the applicants and
12 continuously citing scores of new and only peripherally pertinent alleged
13 prior art references have made it impossible to prosecute the re-
14 examination and thwarted any meaningful appellate review, in violation of
15 the Administrative Procedures Act and the regulations of the PTO[.]
16
17 Brief at 6-7. The afore-mentioned October 8, 2003, Decision Denying Petition (Paper No. 38),
18 quoting MPEP § 1201 (8th ed., rev. 1, Feb. 2003),26 explains that questions regarding the conduct
19 of an examiner are petitionable rather than appealable. Decision at 4 & n.2. Our review is
25 Some of the responses given in the Answer are more extensive than the corresponding
responses given in the Final Office Action. Compare, e.g., the response to testimony paragraph
11 given at page 42 of the Answer to the response given at page 7 of the Final Action. The Brief
fails to specifically address the responses given in the Final Action or the Answer.
26 The quoted portion of MPEP § 1201 reads:
The line of demarcation between appealable matters for the Board
of Patent Appeals and Interferences (Board) and petitionable matters for
the Commissioner of Patents and Trademarks should be carefully
observed. The Board will not ordinarily hear a question which it believes
should be decided by the Commissioner, and the Commissioner will not
ordinarily entertain a petition where the question presented is an
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