Appeal No. 95-0083
Application 07/711,556
executed May 12, 1986, attached to Paper No. 22 in this record and referred to in the
Reply Brief, page 6, footnote 4. The examiner, however, does not acknowledge or
respond to appellants' evidence in the Examiner's Answer or Supplemental Answer.
The examiner does not step back and reevaluate patentability in light of the rebuttal
evidence. In and of itself, this constitutes reversible error. As stated in In re Hedges
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986),
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. [citation omitted].
The rejection of claims 43, 45, 46, 49, 52, 54 and 56 through 58 under 35 U.S.C.
§ 103 is reversed.
OTHER ISSUES
On return of this application to the examining corps, we recommend that the
examiner step back and reassess patentability of the appealed claims under 35 U.S.C.
§ 103. In so doing, the examiner should note that there are two independent claims on
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