Appeal 2007-0006
Application 10/689,172
On May 08, 2006, the Appellants submitted a Brief, along with an
Evidence Appendix containing a copy of a Declaration under 37 C.F.R.
§ 1.132 (2005) of Robert G. Murray. In the Brief, the Appellants present
arguments against the Examiner’s stated obviousness rejections that, in part,
rely on the Declaration of Robert G. Murray (Br. 7). In addition, the
Appellants rely on a European Patent (EP) Publication (EP 0 0372 756), as
evidence, in support of a “teaching away” argument (Br. 7-9). This EP
Publication (EP ‘756) was previously relied upon by the Examiner in
rejecting Appellants’ claims. See Final Office Action 2-3.
In the Examiner’s Answer (showing a July 13, 2006 Mail Date),
claims 1-11 and 29-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lange. Also, claims 6 and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Lange view of Melancon. The
Examiner does not address the Declaration of Robert G. Murray in the
Answer. The Examiner mentions the time Appellants spent in presenting
arguments allegedly supported by EP ‘756; however, the Examiner furnishes
no specific rejoinder. Rather, the Examiner dismissively discounts the value
of the EP ‘756 evidence seemingly because the Examiner no longer applies
EP ‘756 in rejecting the claims. This is clearly an improper basis for not
considering and addressing the merits of Appellants’ teaching away
argument and evidence.
On July 20, 2006, Appellants submitted a Reply Brief noting, inter
alia, the Examiner’s alleged oversight and failure to fully address
Appellants’ arguments, allegedly supported by EP ‘756, as set forth in the
Brief. The Reply Brief was entered and considered, without further
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Last modified: September 9, 2013