Appeal 2007-1234
Application 10/017,990
we agree with the Examiner that Husher discloses in Fig. 3 “a well
[i.e., region 160] formed in the first layer [region 160 extends to the
surface], wherein the well comprises a first conductivity type [P+] and
has a side dimension and a bottom dimension,” as claimed (claim 1).
Regarding the extrinsic evidence newly presented with the
Reply Brief, we have no discretion to consider the new evidence and
associated new arguments. See 37 C.F.R. § 41.33(d)(2):
(2) All other affidavits or other evidence filed after the date of
filing an appeal pursuant to §41.31(a)(1) through (a)(3) will not
be admitted except as permitted by §§41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1).
(37 C.F.R. ¶ 41.33(d)(2)). See also Optivus Tech., Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989, 80 USPQ2d 1839, 1847-48 (Fed. Cir.
2006) (an issue not raised in an opening brief is waived). We note that if
Appellants wish to have the new evidence considered by the Examiner, the
proper procedure is to file a Request for Continued Examination (RCE)
under 37 C.F.R. § 1.114.
Therefore, for at least the aforementioned reasons, we conclude the
Examiner has met the burden of presenting a prima facie case of
anticipation. Accordingly, we will sustain the Examiner’s rejection of
independent claim 1 as being anticipated by Husher.
Dependent claims 2-30
We further note that Appellants have not presented any substantive
arguments directed to the separate patentability of dependent claim 2-30. In
the absence of a separate argument with respect to the dependent claims,
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