Appeal 2007-1470
Application 10/644,567
cross section vs. electron energy, and (2) an article entitled "Applications of
Electron-Beam Generated Plasmas to Materials Processing." Moreover, the
Brief contains arguments for nonobviousness which specifically refer to this
evidence (Br. 3-4). However, the record of this application contains no
indication that the Examiner has acknowledged the submission of this
evidence and approved or disapproved the entry of the evidence. See the
Answer mailed February 27, 2007 and the Advisory Action mailed
September 7, 2005 (i.e., in response to Appellants' August 29, 2005 filing
which first provided the afore-noted evidence). Likewise, the Answer
contains no response by the Examiner to the arguments in the Brief
concerning this evidence.
Under these circumstances, the Examiner must respond to this
Remand by clarifying the application record as to whether this evidence is
entered (and if not why not). Further, if the evidence is entered, the
Examiner must respond to Appellants' arguments in the Brief concerning
this evidence. Specifically, if the evidence and corresponding arguments do
not persuade the Examiner that the § 103 rejections of record should be
withdrawn, the Examiner must thoroughly explain why the evidence and
arguments are considered to be inadequate to successfully rebut the § 103
rejections.
In addition, we observe that independent claim 1 contains language
which may render the appealed claims in violation of the second paragraph
of 35 U.S.C. § 112. The language in question reads "having a width much
larger in dimension than its thickness" (claim 1; emphasis added). This
language may offend the second paragraph of § 112 because the term
2
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