Appeal No. 2006-1321
Application No. 09/838,866
Another area of concern is the apparent failure of the
examiner to specifically treat or otherwise comment on the
declarations of Samuel C. Weaver filed on January 13, 2003 and
August 21, 2003. Although the appellant repeatedly relies on the
Weaver declarations to support arguments made in the brief and
also in the reply briefs, the examiner has not once mentioned
those declarations in the answer or provided any meaningful
analysis and response for the facts and conclusions set forth
therein. More particularly, we note that the examiner has not
meaningfully responded to the arguments in the briefs and
assertions in the declarations concerning the art recognized
distinction between “metal alloys” and “metal matrix composite”
materials, or appellant’s assertions regarding unexpected and
significant results achieved by the claimed invention. Therefore,
we also remand for the examiner to fully treat the declarations.
As we indicated above, appellant has filed two reply briefs
in the present application (November 12, 2004 and June 6, 2005).
In each instance the examiner’s response to the filing of the
reply brief was to send a paper stating merely that the reply
brief had been “noted.” As set forth in 37 CFR § 41.43 in a
proper response the primary examiner “must acknowledge receipt
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