Appeal 2007-2241
Application 09/768,990
1 In our view, the full explanation as to why the 131 affidavit fails to
2 evidence prior invention should have been communicated to Appellant
3 before the Examiner’s Answer. In providing this full explanation after
4 Appellant filed his Appeal Brief, Appellant was not afforded an opportunity
5 to fully understand the Examiner’s objections and make, if needed, the
6 appropriate supplementation of the evidence presented. Upon remand, if the
7 rejection is maintained and Batachia remains included as a prior art
8 reference against the claims, the Examiner should re-evaluate the 131
9 affidavit and, if it is still determined to be deficient, communicate a full
10 explanation of the deficiencies to Appellant and afford Appellant an
11 opportunity to respond.
12 Because the issue has been narrowly defined as whether the 131
13 affidavit is sufficient to demonstrate prior invention, it suggests that the
14 Examiner and Appellant have agreed that the combination of Alberts and
15 Tso would not render the claimed subject matter obvious to one of ordinary
16 skill in the art. Though this is never made clear on the record, this suggestion
17 is buttressed by the fact that Appellant has repeatedly expressed that he
18 understands the Examiner to be taking the position that only with the
19 additional teachings of Batachia is the combination of Alberts, Tso, and
20 Batachia capable of making obvious claims 1-6 and 9-13,2 to which the
21 Examiner has never responded and thus never denied.
2 “Appellant concludes that Examiner believes only with the addition of the
additional teachings of Batachia is the combination of Alberts, Tso, and
Batachia capable of making obvious claims 1-6 and 9-13.” Appeal Br. 6.
Similar statements were made in the Amendment After Final (filed Dec. 12,
2005, p. 3) responding to the Final Rejection and the Pre-Appeal Brief
Request for Review (filed Feb. 2, 2006, p. 2).
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