Ex Parte Chang et al - Page 3

                  Appeal 2006-3307                                                                                             
                  Application 10/102,351                                                                                       

                          In responding to this Remand, the Examiner should take into account                                  
                  the persuasiveness of the evidence in support of Appellants’ contentions vis-                                
                  à-vis the teachings of the relied upon Bergfelt patent.  The Examiner should                                 
                  determine whether or not one of ordinary skill in the art would have found                                   
                  that the teachings of Sato outweigh the predictive and suggestive value of                                   
                  the teachings of Bergfelt (the principal applied reference) with respect to the                              
                  here-claimed subject matter.                                                                                 
                          The Examiner’s full response to Appellants’ arguments and Evidence,                                  
                  properly presented in the Brief, is necessary so that the issues are properly                                
                  developed and joined for our resolution on appeal.                                                           
                          As an additional matter, the Examiner should again review the Reply                                  
                  Brief for compliance with 37 C.F.R. § 41.41.  If the Examiner finds that the                                 
                  Reply Brief is in compliance with this Regulation, the Examiner should take                                  
                  this opportunity to fully respond to any additional arguments made therein in                                
                  a Supplemental Answer.                                                                                       
                          In undertaking the above, the Examiner should review the claims in                                   
                  light of Appellants’ Specification to reassess their scope.  In light of this                                
                  review, the Examiner should fully respond to any arguments made in the                                       
                  Brief and/or Reply Brief that may not been fully responded to in the Answer.                                 










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