Ex Parte VAN DYKE - Page 4


                 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                        
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