Appeal 2007-1471
Application 10/402,110
In the Office Action, mailed Mar. 13, 2006, the Examiner indicated
that the Reply Brief, filed Feb. 28, 2006, had been entered and considered.
However, in noting the Reply Brief, the Examiner did not respond to the
merits of Appellants’ argument.
We have discretion regarding whether we consider newly presented
arguments filed after the opening brief. See 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). Cf. Becton
Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 800, 17 USPQ2d 1097,
1103 (Fed. Cir. 1990) (“This practice is, of course, not governed by a rigid
rule but may as a matter of discretion not be adhered to where circumstances
indicate that it would result in basically unfair procedure.”) (citations
omitted).
While we agree that the Reply Brief is properly used to respond to
points of argument raised by the Examiner in the Answer (and not as a
means for presenting new arguments), we note that this is not a rigid rule.1
Here, we conclude that not considering Appellants’ new argument in the
Reply Brief would result in a basically unfair procedure. Therefore, we have
determined that a fair procedure requires a Supplemental Examiner’s
Answer limited to explaining how the cited Aschenbrenner reference meets
the recited limitation directed to the “dynamic sizing of color tables” (See
claims 1, 8, and 14).
1 See also 37 C.F.R. § 41.41(a)(2)(“A reply brief shall not include any new
or non-admitted amendment, or any new or non-admitted affidavit or other
evidence.”).
2
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