Appeal No. 1999-1223 Page 3
Application No. 08/446,021
Discussion
This board serves as a board of review, not a de novo examination tribunal. 35
U.S.C. § 6(b). The manner in which appellants and the examiner have presented the
issues in this appeal makes review of the issues difficult. The only Office action on the
merits issued by the examiner prior to the appeal proceeding was a first Office action
final rejection. As indicated above, the enablement rejection set forth therein did not
rely upon any evidence in support of the examiner's conclusions. Appellants' response
to the final Office action was to merely cancel claim 26. Appellants did not present
substantive arguments in response to the examiner's rejection. Rather, this appeal
proceeding was instituted.
Appellants' Brief on appeal was accompanied by six documents attached as
Exhibits A-F. It does not appear that appellants relied upon this evidence previously in
this application. In submitting the new evidence with the Appeal Brief, appellants did
not comply with the provisions of 37 CFR § 1.195. Rather than enforce the provisions
of that rule, the examiner accepted the Appeal Brief and filed her Answer in which she
also relied upon new evidence for the first time. Furthermore, the substance of the
rejection in the Answer is substantially different from the rejection expressed in the final
Office action. Appellants did not respond to the examiner's new position by way of
Reply Brief.
Thus, as the record now stands, we have before us for review two completely
new positions taken by appellants and the examiner without benefit of a reasoned
exchange of views as to the strengths and weaknesses of the respective cases. While
we have the benefit of the examiner's views in regard to the new evidence presented by
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