Appeal 2006-3307
Application 10/102,351
In responding to this Remand, the Examiner should take into account
the persuasiveness of the evidence in support of Appellants’ contentions vis-
à-vis the teachings of the relied upon Bergfelt patent. The Examiner should
determine whether or not one of ordinary skill in the art would have found
that the teachings of Sato outweigh the predictive and suggestive value of
the teachings of Bergfelt (the principal applied reference) with respect to the
here-claimed subject matter.
The Examiner’s full response to Appellants’ arguments and Evidence,
properly presented in the Brief, is necessary so that the issues are properly
developed and joined for our resolution on appeal.
As an additional matter, the Examiner should again review the Reply
Brief for compliance with 37 C.F.R. § 41.41. If the Examiner finds that the
Reply Brief is in compliance with this Regulation, the Examiner should take
this opportunity to fully respond to any additional arguments made therein in
a Supplemental Answer.
In undertaking the above, the Examiner should review the claims in
light of Appellants’ Specification to reassess their scope. In light of this
review, the Examiner should fully respond to any arguments made in the
Brief and/or Reply Brief that may not been fully responded to in the Answer.
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Last modified: September 9, 2013