Ex Parte INOUE et al - Page 2




          Appeal No. 1999-2687                                                        
          Application 08/174,353                                                      


          changes in our prior decision for the reasons which follow.                 
          A brief review of the prosecution of this appeal is                         
          instructive.  Appellants filed an appeal brief in which each of             
          the examiner’s rejections was argued to some extent.  The                   
          examiner’s answer in response to this appeal brief responded to             
          each of the arguments in the brief in a manner that was complete            
          and persuasive.  Appellants filed a reply brief in which they               
          stated the following:                                                       
          The Examiner’s Answer clarifies the                                         
                    Examiner’s position in regard to many of the                      
                    rejections.                                                       
          The Applicants’ primary position on Appeal is                               
                    that one skilled in the art would not have                        
                    been motivated to combine the disclosure of                       
                    Wilson with that of Brownstein and/or Hamada                      
                    et al. to achieve the present invention                           
                    [reply brief, page 1].                                            
          The reply brief did not address any of the specific responses               
          made by the examiner in the answer, but only addressed the                  
          propriety of the combination of references used by the examiner.            
          The previous decision essentially affirmed the examiner’s                   
          rejections because appellants did not respond to the persuasive             
          arguments of the examiner set forth in the answer, and because we           
          agreed with the examiner that there was appropriate motivation to           
          combine the prior art teachings in the manner proposed by the               

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