Appeal 2006-3301
Application 10/606,509
Substitute Brief on Appeal filed on June 16, 2006 for entry and, if entered, to
furnish an appropriate response to the Substitute Brief on Appeal. We note
that the Substitute Brief on Appeal was filed after the Examiner’s Answer
dated April 12, 2006 was issued and the application file record does not
reflect that the Examiner responded thereto.
Moreover, we observe that the Examiner presents a rebuttal argument
in the Answer seemingly implying that a 35 U.S.C. § 112, first paragraph
issue is present from the perspective of the Examiner (Answer 7). However,
a 35 U.S.C. § 112, first paragraph rejection has not been presented in the
Answer. Also, the Answer does not include a full statement of the
Examiner’s position setting forth how the teachings of the applied references
would have rendered the rejected claims obvious to one of ordinary skill in
the art in accordance with MPEP § 1207.02 (Rev. 3, August 2005). See
Answer at p. 3.
The Examiner should submit a Supplemental or Substitute Answer
clarifying the record to clearly reflect that only an obviousness issue remains
to be considered with respect to the claimed subject matter on appeal if such
is the case, present a complete statement of the obviousness rejection in
accordance with MPEP § 1207.02 (Rev. 3, August 2005) without reference
to any other Office actions, consider whether the Substitute Brief should be
entered, and, if entered, provide a complete response to the arguments raised
in the Substitute Brief on Appeal. Alternatively, the Examiner should
consider reopening prosecution if the Examiner determines that other
grounds of rejection remain applicable to the claims of the subject
application.
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