Appeal 2007-0006
Application 10/689,172
comment, by the Examiner as set forth in a Communication mailed
September 11, 2006.
However, we additionally observe that Appellants’ Brief is not
technically in compliance with our Regulations. In this regard, 37 C.F.R. §
41.37 (c)(1)(ix) (2006) provides, in part, that the Brief must include a copy
of any other evidence that the Appellants rely upon in the Briefs. A copy of
EP ‘756 is not provided in the Evidence Appendix accompanying the Brief.
Nor is a statement provided in the Evidence Appendix, which statement sets
forth “where in the record that evidence was entered in the record by the
Examiner.” 37 C.F.R. 41.37(c)(1)(ix). In this regard, this latter required
statement by Appellants is missing from the Evidence Appendix for both the
Murray Declaration and EP ‘756.
In light of the above, we remand this application to the Examiner to:
1. Forward to Appellants a Notice of the defective Brief with respect
to the Evidence Appendix omitted items noted above to afford Appellants
an opportunity to correct these technical defects and comply with the Rule;
and
2. Upon submission of a corrected Evidence Appendix for the Brief
by Appellants in compliance with our Regulations, the Examiner should
address Appellants’ arguments in the Brief and Reply Brief and the relied
upon evidence that is already of record in a Supplemental Answer, if the
Examiner maintains the stated rejection. In so doing, the Examiner must
explain why the relied upon evidence is not persuasive of a teaching away, a
lack of suggestion for the proposed modification or a lack of a reasonable
expectation of success for the proposed modification. The Examiner may
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