Reexamination Control No. 90/005,742
Patent 5,253,341
1
2 • Claims 93, 94, 96, 97 under § 103(a) over Cohen in view of
3 Bridges and further in view of Punj. 3d Action at 92, para. 28; Final
4 Action at 248, para. 28; Answer at 16 (no para. no.).
5
6 J. General observations regarding the evidence
7 The above-identified patents and publications are the only references identified in the
8 statements of the rejections. Patents and publications which are not identified in the statements
9 of the rejections but are mentioned in the examiner's discussion of the rejections or Dr.
10 Koopman's testimony have not been considered. See MPEP § 706.02(j) (8th ed., rev. 5, Oct.
11 2006) ("Where a reference is relied on to support a rejection, whether or not in a minor capacity,
12 that reference should be positively included in the statement of the rejection. See In re Hoch,
13 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970)"). Accord Ex parte Movva,
14 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993).
15 The examiner's assertions of technical facts are being given weight only to the extent they
16 are supported by the cited references. See In re Pardo, 684 F.2d 912, 917, 214 USPQ 673, 677
17 (CCPA 1982) ("Assertions of technical facts in areas of esoteric technology must always be
18 supported by citation to some reference work recognized as standard in the pertinent art and the
19 appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion
20 or the notoriety or repute of the cited reference.") (quoting In re Ahlert, 57 CCPA 1023, 1027,
21 424 F.2d 1088, 1091, 165 USPQ 418, 420-21 (1970)). However, the examiner’s asserted
22 motivation for combining the reference teachings need not appear in the references themselves:
23 [A]n implicit motivation to combine exists not only when a suggestion
24 may be gleaned from the prior art as a whole, but when the
25 “improvement” is technology-independent and the combination of
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