Ex Parte 5253341 et al - Page 18




               Reexamination Control No. 90/005,742                                                                                   
               Patent 5,253,341                                                                                                       

          1    H.  The § 112 rejection                                                                                                
          2            Claims 94 and 97 stand rejected under § 112, first paragraph, for lack of an enabling                          
          3    disclosure.  3d Action at 72, para. 9; Final Action at 232, para. 11; Answer at 6 (no para.                            
          4    number).33                                                                                                             
          5    I.  The art rejections                                                                                                 
          6                                                                                                                           
          7            The pending grounds of rejections can be grouped as follows (including citations to the                        
          8    Third Action, Final Action, and Answer):                                                                               
          9            1.  Rejections based on Filepp                                                                                 
         10                                                                                                                           
         11                    •  Claims 9-11 and 14 under 35 U.S.C. § 103(a) for obviousness                                         
         12            over Filepp in view of known practices, as evidenced by The Electronics                                        
         13            Engineers' Handbook, the Gale articles, De Maine, Carr, Giltner,                                               
         14            Notenboom, and LeGall.  3d Action at 75, para. 14; Final Action at 234,                                        
         15            para. 14; Answer at 7-8, para. 2.                                                                              
         16                                                                                                                           
         17                    •  Claims 9, 10, 14 under § 103(a) over Filepp in view of Row.  3d                                     
         18            Action at 79, para. 17; Final Action at 237, para. 17; Answer at 9, para. 3.                                   
         19                                                                                                                          
         20                    •  Claim 11 under § 103(a) over Filepp in view of Giltner.  3d                                         
         21            Action at 83, para. 18; Final Action at 241, para. 18; Answer at 12, para.                                     
         22            4.                                                                                                             
         23                                                                                                                           
         24                                                                                                                           
         25                                                                                                                           
         26            2.  Rejections based on Yurt                                                                                   
         27                                                                                                                           
         28                    •  Claim 11 under § 103(a) over Yurt in view of Kandell.  3d                                           
                                                                                                                                     
                       33  This ground of rejection, which previously applied against claims 94, 95, 97, and 98,                      
               3d Action at 72, para. 9; Final Action at 232 para. 11, was not repeated as to claims 95 and 98 in                     
               the Answer and is therefore being treated as withdrawn as to those claims.  Likewise, the § 112                        
               rejection of claims 95, 98, and 103 for failure to satisfy the written description requirement, 3d                     
               Action at 73-74, paras. 11-12; Final Action at 233-34, paras. 12-13, was not repeated in the                           
               Answer and is being treated as withdrawn.                                                                              
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