Appeal 2006-3307
Application 10/102,351
being relied upon by the Appellants. A statement describing the location in
the record where the evidence was introduced into the record was identified
in the Evidence Appendix and a copy of the evidence accompanied the
Brief. See 37 C.F.R. § 41.37(c)(ix) (2006)). Also, the Appellants presented
arguments against the Examiner’s obviousness rejection in the Brief that, in
part, rely on Sato et al. as evidence in support of a “teaching away”
argument (Br. 15-16).
In the Examiner’s Answer (Mail Date: April 19, 2006), the Examiner
references the Evidence Appendix and notes that Sato was no longer being
relied upon by the Examiner. (Answer 7). However, the Examiner does not
address Appellants’ “teaching away” argument and the relied upon evidence
in support thereof in the Answer with respect to the obviousness rejection.
On June 16, 2006, Appellants submitted a Reply Brief noting, inter
alia, the Examiner’s alleged oversight and failure to fully address
Appellants’ “teaching away” arguments, which are allegedly supported by
Sato (Reply Br. 5 and 6). The Reply Brief was noted as being entered and
considered, without further comment, by the Examiner as set forth in a
Communication mailed August 28, 2006.
In light of the above, we remand this application to the Examiner to
fully address Appellants’ “teaching away” arguments in the Brief and Reply
Brief and the relied upon Sato reference in a Supplemental Answer, if the
Examiner maintains the stated obviousness rejection after review thereof. In
so doing, the Examiner must explain why the Appellants’ evidence is not
persuasive of a teaching away, a lack of suggestion for the proposed
modification or a lack of a reasonable expectation of success for the
proposed modification.
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