Appeal No. 1998-2002
Application 08/690,016
The dissent points out that appellants did not respond to
the obviousness-type double patenting rejection in the brief
but rather responded to the rejection for the first time in
the reply brief. The dissent would remand this application to
the examiner for the purpose of supplementing the record with
a response to the arguments presented in the reply brief.
Although the majority does not condone the fact that
appellants responded to the rejection for the first time in
the reply brief, the majority disagrees that a remand is
proper in this case.
First, the examiner bears the initial burden of
presenting a prima facie case of unpatentability regardless of
any arguments advanced by appellant. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (the
examiner bears the initial burden of presenting a prima facie
case of unpatentability). Second, the very fact that the
examiner entered the reply brief appears to suggest that no
response was deemed necessary. See MPEP § 1208.03 (7th ed.,
July 1998) ("The acknowledgment of receipt and entry of a
reply brief under 37 CFR 1.193(b)(1) is an indication by the
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