Appeal No. 2001-0554
Application No. 08/621,937
pages of the brief, the examiner offers for our consideration
only one short paragraph at the bottom of page 5 of the answer
which fails to address each and every assertion and argument made
by appellants as to these different categories of secondary
evidence. Moreover, in topic 5 at pages 6 and 7 of the Reply
brief, appellants assert that the examiner has merely dismissed
the substantial evidence of secondary considerations and avoids a
proper consideration of it.
In view of the foregoing, we are constrained to reverse the
stated rejections of the claims on appeal under 35 U.S.C. § 103
for failure to assert a prima facie case and to remand the
application to the examiner. We note especially that the examiner
is free to reinstitute the existing grounds of rejections to the
extent the examiner chooses to comply with the requirements of
MPEP 1208 regarding rejections under 35 U.S.C. § 103 and set forth
a proper correlation of specific portions of the applied prior art
to specific features of the claims on appeal. The examiner is
also free to utilize new, different prior art not of record. In
any event, should the examiner choose to reinstitute rejections
under 35 U.S.C. § 103, the examiner is further required to address
the evidence of secondary consideration set forth in the brief and
reargued in the Reply brief.
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