Appeal No. 1996-1626
Application No. 07/642,848
the “dye” and the “substrate of an optical disk” are claimed separately.Appellants refer (Brief, pages
6-7) to “the Declaration Pursuant to 37 CFR §1.132" as support for the argument that the artisan
would not have interpreted the reference as suggesting an optical disk having a fluorescent dye.
Appellants filed a declaration on July 25, 1994 (Paper No. 22) setting forth the opinion of the co-
inventors of the instant application. On pages 2 through 13 of the declaration, appellants submit a
reasonable case in support of their position, based on objective facts in the reference and allegations
concerning what the artisan would have known. The examiner bears initial responsibility for determining
whether affidavits or declarations submitted under 37 CFR § 1.132 are responsive to a rejection and
present sufficient facts to overcome the rejection. See Manual of Patent Examining Procedure § 716,
Seventh Edition. However, the examiner does not appear to respond to the substance of the
declaration in any of the Final Rejection, Answer, or two supplemental Answers. 2
In the examiner’s responses to appellants’ arguments, it appears that the examiner bases the
opinion that the reference would have suggested an optical disk having a fluorescent dye principally on
the reference’s statement that the disclosed “resin molded body” can be used for optical parts such as a
transparent substrate of an optical disk, and that the reference’s Claim 10 is directed to a “resin molded
2 In the Final Rejection, page 2, the examiner refers to an unexecuted paper filed November 29, 1993
and states that the declaration has not been considered because it is not signed by the inventors. There is no
indication from the examiner that the declaration filed July 25, 1994 was considered untimely and thus not
considered. To the contrary, the examiner states at the top of page 2 of the Answer that the amendment after
final filed on July 25, 1994 has been entered.
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