Appeal No. 2006-0867
Application No. 10/257,943
4,013,422. In addition to the arguments presented by the Appellants in the Brief,
Appellants refer to rebuttal evidence in the form of two non-patent literature documents,
1
as well as a declaration. (See brief, pages 2, 3, 11, 12 and 13). The Examiner
provides a brief response to only the declaration evidence on page 6 of the answer.
The Examiner has failed to discuss the Appellants’ reliance on the article to Kong and
the article to Aiello.2
While the burden of establishing a prima facie case of obviousness under 35
U.S.C. § 103(a) resides with the Examiner, the Appellants are entitled to present
arguments and evidence (including documents) to rebut any prima facie case
established by the Examiner. In order to determine the propriety of the rejection, all
arguments and evidence must be fully considered by the Examiner. In the present
case, the record is deficient because the Examiner has not addressed the documents
relied upon by the Appellants to rebut any prima facie which has been established. The
Examiner should fully explain why the documents relied upon by Appellants are not
suitable to rebut the stated rejection. Thus, the Examiner should issue a Supplemental
Answer fully responding to Appellants’ arguments and evidence presented in the Brief.
1These documents were presented in the response to a non-final amendment
submitted by Appellants on February 11, 2004.
2A review of the final rejection reveals that the Examiner has also failed to
address the references to Kong and Aiello.
2
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