Appeal No.2003-1091
Application No. 09/484,248
rely on assertions made with respect to claim 1, i.e., that
Butcher fails to disclose the single step selection of a
plurality of delay elements. As previously discussed, we find
these arguments unpersuasive since the language of claim 1 does
not require the selection of a plurality of delay elements but,
rather, only the single step selection of “up to a plurality of
delay elements.” Since Appellant, by the presented arguments,
has chosen to let the rejection of claims 2-8, 11-13, and 18-20
stand or fall with claim 1, the Examiner’s 35 U.S.C. § 103(a)
rejection of these claims is sustained. Note In re King, 801
F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
We have taken note of Appellant’s presentation, for the
first time, in the Reply Brief of arguments directed to claims 2
and 20, as well as the discussion of features of other
unspecified claims. We will not consider these new arguments.
Because an Examiner is no longer permitted to file sua sponte a
supplemental Examiner’s Answer in response to a Reply Brief, 37
CFR § 1.193(b)(1)(1998), we do not have the benefit of the
Examiner’s response to Appellant’s new arguments. Considering
the new arguments would not only be unfair but would entail the
risk of an improvident or ill-advised opinion. Cf. Kaufman Co. v
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