Appeal No. 1998-1647
Application 08/668,503
Independent claim 25 calls for an end-seal bag having a
patch “covering at least a segment of at least one member
selected from the group consisting of the first side edge and
the second side edge” of the bag. Claim 44, the only other
independent claim on appeal, contains identical language. The
examiner concedes that Ferguson does not meet this claim
limitation (“Ferguson’s patches do not cover at least a
segment of a side edge.” (answer, page 3)). However, the
examiner directs our attention to column 3, lines 30-35, of
1.193(b). Such paper will not be entitled to entry
simply because it is characterized as a reply brief.
Since appellants’ Paper No. 29, styled “Reply Brief Under
37 CFR 1.193,” inappropriately includes evidence of
nonobviousness in the form of three declarations under 37 CFR
1.132, it is not a reply brief within the meaning of 37 CFR
1.193(b) and therefore was not entitled to entry as a matter
of right. Notwithstanding the above, the examiner entered
appellants’ “reply brief” (see Paper No. 30, mailed December
19, 1997). However, in so doing, the examiner inappropriately
failed to discuss the impact of the three attached
declarations, which presumably were also entered since they
were included as an integral part of Paper No. 29. While the
above circumstances would normally necessitate a remand to the
examiner for the purpose of having him state on the record why
the declarations do not overcome the standing § 103 rejection,
in this particular instance the examiner’s views with respect
to said declarations are moot in that we do not consider that
a prima facie case of obviousness of the claimed subject
matter has been established.
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