Appeal No. 1999-0156
Application 08/555,901
itself (a form of obviousness), or that it would have been obvious to combine the teachings
of Murase and Nakabayashi to arrive at the claimed invention [answer, pages 3-7].
Rather than repeat the arguments of appellants or the examiner, we make reference
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to the briefs and the answers for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejection advanced
by the examiner and the evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into consideration, in reaching
our decision, the appellants’ arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal set forth in the examiner’s
answers.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of ordinary
1Appellants filed a reply brief on April 21, 1998. This reply brief addressed the rejection on
the merits and also requested that prosecution be reopened based on the examiner’s change in position
on the Murase reference. The examiner responded with a supplemental examiner’s answer in which the
examiner stated that the reply brief “has been considered only to the extent that it requests the
withdrawal of the final rejection and the reopening of persecution [sic] so that Applicants may further
argue the merits of the Murase reference. This request is denied.”
At the time appellants’ reply brief was filed, 37 CFR § 1.193 had been amended to permit an
appellant to file a reply brief. The examiner must either acknowledge receipt and entry of the reply brief
or reopen prosecution to respond to the reply brief. Since the examiner clearly did not reopen
prosecution as requested by appellants, we treat the reply brief as having been received and entered
pursuant to 37 CFR § 1.193.
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