Appeal No. 1998-2002
Application 08/690,016
Thus, it is only in the Reply Brief that the appellants have
ever offered any reasons for contesting the rejection under
consideration. Significantly, the examiner has not provided
the application file record with a rebuttal to the
aforementioned arguments but instead has simply entered the
Reply Brief without comment regarding these arguments.
Under these circumstances, it is clear that the record of
this appeal is not in condition for an informed and meaningful
appellate review concerning the double patenting issue raised
by the examiner. In practical effect, a majority’s decision
to reverse the double patenting rejection is based on an
appeal record which contains a Brief but no Answer.
Manifestly, this application should be remanded to the
examiner so that he can provide the record with a response to
the double patenting arguments made for the first and only
time in the Reply Brief. For unknown reasons, the majority
has unwisely chosen to resolve the double patenting issue
raised by the examiner based on the inchoate record of this
appeal.
Compounding this lack of wisdom is the majority’s
decision to reverse the examiner’s obviousness-type double
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