Ex Parte Blankenship et al - Page 2


         Appeal No. 2003-0675                                                       
         Application No. 09/789,388                                                 

         (4th ed., New York, John Wiley & Sons, Inc. 1992).  Concerning             
         the appellants’ overall submission, the examiner stated: “The              
         reply brief filed 11/6/02 has been entered and considered.  The            
         application has been forwarded to the Board of Patent Appeals              
         and Interferences for decision on the appeal.”  (Communication             
         mailed Jan. 22, 2003, paper 15.)  The examiner, however, did not           
         comment on whether the newly submitted evidence has been entered           
         and considered.                                                            
              37 CFR § 1.195 states: “Affidavits, declarations, or                  
         exhibits submitted after the case has been appealed will not be            
         admitted without a showing of good and sufficient reasons why              
         they were not earlier presented.”  In addition, MPEP § 1208.03             
         (Aug. 2001) explains:                                                      
                   Amendments, affidavits, and/or other evidence                    
              must be submitted in papers separate from the reply                   
              brief, and the entry of such papers is subject to the                 
              provisions of 37 CFR 1.116 and 37 CFR 1.195.  A paper                 
              that contains an amendment (or evidence) is not a                     
              reply brief within the meaning of 37 CFR 1.193(b).                    
              Such a paper will not be entitled to entry simply                     
              because it is characterized as a reply brief.                         
              It is clear, therefore, that the examiner’s failure to                
         comment on the newly submitted evidence is not in accordance               
         with current patent practice and procedure.  To correct this               
         deficiency, the examiner must clarify whether the submission of            
         the evidence complies with the provisions of 37 CFR § 1.195                


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