Appeal No. 2006-1820
Application No. 08/889,440
Claims 1, 3-9, 11-20, and 22-31, all of the claims, stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on an inadequate written description as well as relying on a non-
enabling disclosure.
Claims 1, 16, 20, 23, and 24 stand further rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 3-9, 11-20, 22-31, all of the claims, stand further rejected under 35 U.S.C.
§ 103 as unpatentable over either one of Misaka or Baumann, in view of the examiner’s “own
experience” (Official notice).
Claims 1, 3-9, 11-20, 22-26, and 28-31 stand further rejected under 35 U.S.C. § 103 as
unpatentable over either one of Yamada or Misaka or Baumann or Husinsky, in view of either
one of Kinema/SIM or Reeves or Cohen.
Claims 1, 3-9, 11-20, and 22-31 stand still further rejected under 35 U.S.C. § 103 as
unpatentable over Ohira in view of either one of Kinema/SIM or Reeves or Cohen.
Reference is made to the brief and answer for the respective positions of appellants and
the examiner.
OPINION
At the outset, we note that we find the examiner’s seventy-five page answer
unnecessarily wordy. For example, the “few introductory remarks” (answer-page 9), from pages
9-18, regarding the alleged tone of appellants’ comments, arguments about alleged “other
versions” of the Kinema/SIM reference, and the mini-treatise on a prima facie case, from pages
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