Appeal No. 1995-2698
Application 07/660,807
issued a communication on December 28, 1993 (Paper No. 22) stating that the
Reply Brief had been entered and considered but no further response by the
examiner was deemed necessary. This was error on the examiner’s part.
Under the then existing provisions of MPEP § 1208.04, the examiner was
to issue a Supplemental Examiner’s Answer indicating whether the new ground
of rejection had been overcome, and if not, setting forth the examiner’s position
in response. Absent a substantive response of the Reply Brief from the
examiner, neither appellant nor this merits panel is in a position to determine
what the examiner’s position is.
Substantive Error
In arguing the existing rejection under 35 U.S.C. § 103 in the Appeal Brief,
appellant relied upon the declaration of appellant Dr. Knox Van Dyke filed under
37 CFR § 1.132 as evidence of nonobviousness. See pages 13-14 of the
Appeal Brief. The examiner did not mention or respond to this portion of
appellant’s position in the Examiner’s Answer. Appellant made note of this
shortcoming of the Examiner’s Answer in the Reply Brief stating at page 7 that
“the examiner does not even address this evidence in his [answer].” As set forth
above, the examiner has not filed a substantive response to the Reply Brief.
As this record now stands, appellant relies upon objective evidence of
nonobviousness in support of his position on appeal. Neither the Examiner’s
Answer nor the response to the Reply Brief addresses this evidence. This is
legal error on the part of the examiner. As set forth in In re Hedges, 783 F.2d
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007