Appeal No. 2000-0630
Application No. 07/780,717
Appellants’ Brief on Appeal (paper no. 45), however, addressed only two issues:
(1) the rejection of claims 39 through 45, 47 through 54, 56 through 58, and 60 through 67
as unpatentable over Hendrickson, Sano, Kenten, Shoemaker, Tolman, Lowenadler and
Meade; and (2) the rejection of claim 68 as unpatentable over Hendrickson and Sano.
As set forth in MPEP § 1206, “[a]n appellant’s brief must be responsive to every
ground of rejection stated by the examiner.” “Where an appeal brief fails to address any
ground of rejection, appellant shall be notified by the examiner that he or she must correct
the defect by filing a brief . . . in compliance with 37 CFR § 1.192(c).”
The examiner did not notify appellants of any deficiency in the Brief on Appeal.
Instead, the examiner agreed with appellants’ statement of the issues in the Brief
(Examiner’s Answer, paper no. 48, page 2), but nevertheless maintained all three
rejections from the final in the body of the Answer (except that claims 66 and 67 were no
longer included in any rejection).
Appellants submitted a Reply Brief (paper no. 49) in response to the Examiner’s
Answer, but did not address the rejection of claims 39 through 45, 47 through 54, 56
through 58 and 60 through 65 over Rodwell, Hendrickson, Sano, Kenten, Shoemaker,
Tolman, Lowenadler and Meade.
Despite the confusion, we shall decide all three of the rejections set forth in the
Examiner’s Answer because we view the examiner’s proposed combination of
Hendrickson and Sano as dispositive in each of the rejections, and because appellants
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