Appeal 2007-0653
Application 10/338,254
impossible to apply prior art to something that cannot be physically exist."
(page 16 of Answer, penultimate sentence).
Appellants, on the other hand, contend that "[t]he fact that a single
(mono) crystal can have multiple crystallographic planes is fundamental
metallurgical knowledge, and it is not believed necessary to provide an
affidavit to that effect" (page 6 of principal Br., penultimate paragraph).
Appellants add in their Reply Brief that they "continue to assert that the fact
that a single (mono) crystal can and does have multiple crystallographic
planes is fundamental metallurgical knowledge, and the Board is urged to
consult with more experienced examiners or examine any basic
metallurgical text if it has any doubts" (page 2, last sentence).
Inexplicably, neither the Examiner nor Appellants have provided any
objective evidence to lend factual support for their diametrically opposed
arguments. Manifestly, Appellants' invitation for the Board to research the
point is totally inappropriate. Clearly, it is not within the province of this
Board to search and uncover evidence which supports Appellants' position.
It is fundamental that an applicant must include in the Brief all arguments
and supporting evidence relied upon.
Accordingly, this application is remanded to the Examiner as it is not
ripe for decision. The Examiner should bear in mind that the initial burden
of establishing unpatentability rests with the Examiner. Accordingly, the
Examiner should present objective evidence to support the rejection based
on lack of description of the claimed invention. Once this may occur,
Appellants should be afforded the opportunity to rebut the rejection with
evidence to support their argument regarding the crystallographic nature of
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