Appeal No. 2006-2275 Page 6
Application No. 09/731,998
the provisional application, which, again, was readily available to them anytime after
November 23, 2004, and chose merely to argue, not that the reference was not a proper
reference, but only that the examiner had not shown, specifically, that the reference was
enabling for the purposes of using the provisional application filing date in rejecting the
instant claims.
This puts us in the awkward position of having to analyze the provisional
application sua sponte, having only the examiner’s input as to what it discloses and
having no input from appellants as to their position on the substance of the document.
Since we have no input from appellants in this regard and the examiner’s rationale does
not appear, on its face, to be unreasonable, we will find for the examiner on the
substantive issue, as arguments not made by appellants are deemed waived. We note,
specifically, that the examiner, at pages 9-10 of the answer, sets forth the rationale as to
why the provisional application is deemed to be fully supported under the first paragraph
of 35 U.S.C. § 112, relying on Figures 8 and 9 and paragraphs [0041]-[0043] of Watson
and showing the correspondence to page 9, lines 16-24, and Figures 8 and 9 of the
provisional application. Even though appellants filed a reply brief in response to the
examiner’s answer, appellants never substantively refuted the examiner’s findings.
Thus, we do not find it to be reversible error on the examiner’s part to have not
provided appellants with the provisional document in question, even though it would
have been proper to do so. We also sustain the examiner’s rejections of claims 1-69
under 35 U.S.C. § 102(e) and 35 U.S.C. § 103 because the examiner’s rationale does not
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007