Reexamination Control No. 90/005,742
Patent 5,253,341
1 3d Action at 78-79, para. 16; Final Action at 236-37, para. 16 (emphasis added).38 Ordinarily,
2 the citation of cumulative references is to be avoided. As explained in § 706.02 of the MPEP
3 (8th ed., rev. 5, Oct. 2006), under the heading "Choice of Prior Art; Best Available," "[p]rior art
4 rejections should ordinarily be confined strictly to the best available art" (subject to several
5 exceptions which do not apply here39) and "[m]erely cumulative rejections . . . should be
6 avoided." Id. See also In re Herrick, 344 F.2d 713, 716, 145 USPQ 400, 401 (CCPA 1965):
7 Regarding claim 1, the most reasonable interpretation of the board's
8 statement leads to the conclusion that there is, in fact, the astounding total
9 of twenty-four separate rejections of the claim. As to claims 2 and 3, there
10 is no meaningful way to tell how many rejections have been made,
11 because of the board's use of the disjunctive conjunction ‘and/or.’ The
12 number of rejections of claims 4, 5, 6 and 8 is likewise indefinite, due to
13 the use of the word ‘any,’ but the minimum number is eleven. A rejection
14 so stated defeats the intent and purpose of 35 U.S.C. § 132.
15 The form of the rejections would seem to indicate that many of the
16 references were considered merely cumulative. And yet, the examiner's
17 answer and the solicitor's brief describe and analyze each reference in
18 some detail. Such a state of affairs places this court in a very real
19 quandary. Are we to choose one individual rejection for each claim and
20 turn the entire appeal on the correctness of those rejections? Or are we to
21 work our way step-by-step through each rejection in the hope of finding
22 one we can sustain? Neither alternative is satisfactory from the standpoint
23 of the public interest.
24
25 On the other hand, it is appropriate to rely on cumulative references to show the existence of a
26 technological trend. See Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150, 219 USPQ 857, 860
38 We agree with Dr. Koopman that the term "board CPU" apparently refers to a non-
microprocessor CPU. 2d Koopman Decl. at 162, para. 346.
39 These exceptions are: “(A) the propriety of a 35 U.S.C. § 102 or 103 rejection
depends on a particular interpretation of a claim; (B) a claim is met only in terms by a reference
which does not disclose the inventive concept involved; and (C) the most pertinent reference
seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.” MPEP § 706.02.
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