Appeal No. 1996-2919
Application No. 08/139,861
October 24, 1995. According to appellants, "routine
experimen-tation would have led one to use the Sayo catalyst
with the Sayo substrate rather than the present substrate in
the Tenud reaction, and, thus, routine experimentation would
not have led one to the present invention" (sentence bridging
pages 2 and 3 of Reply Brief). In a paper dated November 27,
1995, the examiner stated that the Reply Brief and the
Declaration "have been entered and considered but no further
response by the Examiner is deemed necessary." However, the
examiner's failure to substan-tively consider the merits of
the Declaration, in and of itself, constitutes reversible
error.
We also note that appellants provide separate arguments
for claims 11-13, 14-19, 20 and 21, 22, 24, and 26 (pages 23
and 24 of principal brief). The examiner's failure to respond
to these separate arguments also constitutes reversible error.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
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