Appeal No. 2001-0554
Application No. 08/621,937
In this light, for example, appellants point out at page 4
of the Reply brief that claim 8 requires a semiconductor laser.
Appellants assert there that each of Tadatsu, Tokailin and Chao
do not teach a laser. The examiner has not asserted that the
electric crystal display of independent claim 22 and its
backlight member is taught or suggested in any of the applied
art; the same may be said of the viewable panel of claim 23. The
initial burden lies upon the examiner setting forth the rejection
and not upon a panel of this Board to make the findings and
specific correlations of the applied art to the claims when art
rejections under 35 U.S.C. § 103 have been made.
Even if we were to agree that the examiner’s rejections were
meritorious or were proper within 35 U.S.C. § 103, we would have
necessarily remanded the application to the examiner because the
examiner has failed to properly address the assertions of
secondary evidence set forth at pages 12 through 18 of the
principal brief on appeal. Within these pages, the appellants
have asserted a long felt but unsolved need with respect to
certain portions of the specification as filed, the failure of
others, and commercial success and scientific recognition, making
specific references to Appendix B attached to the brief. As to
all of this evidence and the arguments made by appellants in six
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