Appeal No. 96-2323
Application 08/116,555
evidence presented in the Kanda Declaration is commensurate in
scope with each of appellants’ claims.
The examiner has not followed any of the board’s
guidance. The examiner has not undertaken a claim-by-claim
analysis but, rather, has merely pointed out (supplemental
answer, page 2) that appellants state that the claims stand or
fall together (brief, page 5). The record upon which this
statement was based, however, did not include a claim-by-claim
analysis by the examiner of whether the evidence relied upon
by appellants is commensurate in scope with the claims. Thus,
there was no argument by the examiner for appellants to
challenge regarding whether the evidence is commensurate in
scope with each claim.
The examiner has not addressed whether some, but not all,
claims would have been prima facie obvious to one of ordinary
skill in the art over the applied prior art, addressed the
predictability or unpredictability of the art and, based upon
this analysis, explained why the evidence relied upon by
appellants is not commensurate in scope with each claim for
which a prima facie case of obviousness has been established.
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