On October 11, 2005 appellant filed a reply brief including
41 pages of argument and comments concerning each of the nine rejections maintained by
the examiner on appeal and separately addressing the examiner’s various positions in the
answer with regard to nearly all of the thirteen claims on appeal, eight of which are
independent claims. The reply brief also included attached evidence relied upon by
appellant in the arguments set forth on pages 30-35 of the reply brief. Our review of the
record would appear to show that the reply brief represents appellant’s first opportunity to
respond to the full details of many of the examiner’s rejections on appeal.
In response to the reply brief, the examiner sent out a communication (mailed
November 4, 2005) informing appellant that the reply brief had been “entered and
considered” and that the application was being forwarded to the Board of Patent Appeals
and Interferences for decision on the appeal.
Our problem is that the examiner’s pro forma response is woefully inadequate in this
particular case, since it fails to provide us with his views concerning the numerous and
specific arguments presented by appellant in the 41 pages of the reply brief. Nor does the
examiner address the new evidence in the form of the User Manuel for the OCE 9400
Printer/Copier attached to the reply brief. As we noted above, appellant has specifically
relied upon that evidence in arguments presented in the reply brief (pages 30-35). In
addition, it appears that the examiner has ignored the argument bridging pages 29-30 of
the reply brief asserting that the Digital ES printout dated July 2004, relied upon to reject
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