Appeal No. 1996-2229
Application 08/196,748
reason, the briefings on appeal are incomplete and the prior art
rejections are not ready for a disposition on appeal.
In the Appeal Brief, page 6, appellant relies on the
Nicholson reference as evidence of non-obviousness. The
examiner, however, does not counter with any argument or
response. This constitutes procedural error and, again, leaves
the Board with incomplete briefings on appeal. 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]
This the examiner has not done.
On return of this application to the examining corps, we
recommend that the examiner reevaluate the patentability of
claims
1 through 4 on prior art grounds. If the examiner adheres to the
position that appellant's claims are anticipated by or, in the
alternative, obvious over Söderström (U), Yoshimoto (RR),
Yoshimoto (SS), or Söderström (TT), the examiner should issue an
6
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