Appeal No. 2004-0907
Application No. 09/192,674
We observe that the de Haan reference is cited in the instant specification (at 8),
and appears to have been co-authored by an instant co-inventor. In any event, at least
for the reason that the reference was cited in the specification, appellants should be in a
position to provide salient reasons why the instant claims distinguish over the applied
teachings and why the examiner errs in the rejection. Appellants could have, but chose
not to, submit a reply brief to contest any of the examiner’s findings in the Answer.
We conclude that the examiner’s case for prima facie unpatentability has not
been demonstrated to be in error, and thus sustain the rejection. We make our
determinations on the record before us. We stress, however, that we are not inviting
new arguments from appellants that could have been presented in a brief or reply brief.
Arguments not relied upon are deemed waived. See 37 CFR § 1.192(a) (“Any
arguments or authorities not included in the brief will be refused consideration by the
Board of Patent Appeals and Interferences, unless good cause is shown.”) and
§ 1.192(c)(8)(iv) (the brief must point out the errors in the rejection). See also 37 CFR §
41.37(c)(1)(vii) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) (“Any arguments or authorities not
included in the brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board, unless good cause is shown.”).
-5-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007