Appeal No. 2005-2111 15
Application No. 09/827,454
16 may not constitute the “second beam,” as claimed, appellant merely generally alleges
that not “a single step having the respective claim limitations” of claim 42 is taught by
Pepper. While that argument may have been enough in the absence of any showing by
the examiner as to how the examiner reads the reference on the claim, the examiner
specifically points out how each and every claimed step is considered to be met by
Pepper, except, of course, for the claimed broad area intra-cavity phase conjugator which
is alleged to have been an obvious modification in view of Vasil’ev. Yet, in the face of this
showing by the examiner, appellant fails to respond in the reply brief.
Accordingly, weighing the examiner’s seemingly reasonable case against a mere
general allegation by appellant that Pepper shows not a single claimed step, we find for
the examiner and we will sustain the rejection of claims 42-44 under 35 U.S.C. § 103.
We realize that our finding anent the rejection of claims 42-44 may open an issue
as to whether the rejection of claims 1-17, 36-41, and 45-47 under 35 U.S.C. § 103 could
have been properly based on a combination of Pepper and Vasil’ev (without the
examiner’s reliance on this combination together with Akkapeddi (claims 1-17, 40, 441,
45-47) or together with Sharp (claims 36-39)) using reasoning similar to that applied by the
examiner with regard to claims 42-44. We make no determination on this issue as no
such rejection incorporating the examiner’s reasoning as in the rejection of claims 42-44 is
before us, preferring to leave any such issues to appellant and the examiner to resolve.
Perhaps, if confronted with such an issue, appellant may be able to make a convincing
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