Appeal 2007-1388
Application 10/431,346
As another matter, Appellants and the Examiner brief us on different
evidentiary records as being relied upon in the rejections. The Examiner
attempts to introduce U.S. Pat. No. 4,446,241 as part of the applied prior art
evidence being relied upon in the rejection of claims 1, 2, 7-12, and 16
(Answer 5). However, the Brief is directed to arguing a rejection based on
the evidence actually referred to by the Examiner in the statement of the
rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970). In addition, the Examiner has not fairly addressed all of
Appellants’ considerable arguments against the Examiner’s rejections as
presented in the Brief.
As a final point, the record reflects that an Information Disclosure
Statement was filed on April 10, 2007, which requires the Examiner’s
consideration.
In light of the above-noted matters, this remand to the Examiner
requires the Examiner to take more corrective action than could reasonably
be expected to be handled via a Supplemental Examiner’s Answer.
Accordingly, this Remand pursuant to 37 C.F.R. § 41.50 (a)(1) is not solely
for further consideration of a rejection already made.
REMANDED
tlc
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