Appeal No. 2006-1814
Application 10/365,314
The present answer does not actually reflect any commentary regarding the argument at
pages 8 and 9 of the principal brief on appeal regarding appellants’ statements that they may be
their own lexicographer. Additionally, even though the present rule of practice permits an
examiner, as of the respective date of the answer and brief and reply brief, to file a supplemental
answer, none has been provided in response to significant arguments in the reply brief. These
arguments relate to the appellants’ remarks at pages 7 and 8 with respect to Phillips v. AWH
Corporation, 415 F.3d 1303, 75 USPQ2d 1321, (Fed. Cir. 2005). Additionally, because of the
nature of the remarks set forth at pages 12 through 14 of the reply brief as to the rejection of
claims 30 through 36 under 35 U.S.C. § 102(b) as being anticipated by Little, it appears that
significant challenges have been made by the appellants as to the examiner’s views with respect
to this reference’s application to independent claim 30.
We are equally concerned that the filing of the reply brief does not appear to be
responsive to the answer within 37 CFR § 41.41. The approach followed in the reply brief
generally reargues the issues as presented in the principal brief on appeal and again presents the
claims on appeal, which approaches are highly disfavored. This provision of the rule permits a
reply to the arguments in the answer period. To the extent the reply brief reargues issues already
presented in the brief and attaches the claims on appeal, the reply brief does not comply with the
rule. Moreover, the substance of the remarks at pages 9 and 10 of the reply brief seem to
misconstrue the examiner’s corresponding remarks in the answer. The examiner discusses in the
paragraph bridging pages 5 and 6 of the answer the Brown reference, where at pages 6 and 7 the
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