Appeal 2007-4331
Application 10/400,742
articulated how the porous bodies described in Merkel would necessarily be
possessed of a pore size distribution, as here-claimed. Thus, the Examiner
has not shifted the burden to Appellants to show that the porous bodies of
Merkel would not possess a pore size distribution meeting Appellants’
appealed claim requirements.2 It follows that we shall reverse the
Examiner’s anticipation rejection over Merkel, on this record.
REMAND
The Examiner’s Advisory Action of May 26, 2006 includes
conflicting information regarding the entry status of the Merkel Affidavit
filed May 10, 2006. Compare the Advisory Action Form PTOL 303, Item
No. 8 with the continuation sheet attached thereto. Clarification of the
record as to the correct status of the Merkel Affidavit is required prior to
final disposition of this Application.
Furthermore and prior to the final disposition of this application, the
Examiner should consider the patentability of the appealed claims under the
other pertinent Sections of Title 35 of the United States Code, including
under 35 U.S.C. § 103 relative to the prior art developed during the
examination of this application, if the Examiner has not already carried out
this required analysis.
2 Hence, we do not reach the Merkel Affidavit filed May 10, 2006. Also, we
note that the Evidence Appendix attached to the Brief states “None”, albeit
the Merkel Affidavit is attached and discussed in the Brief (Br. 4).
Moreover, we note that the Communication filed May 09, 2007, was filed
beyond the two month time period for submitting a Reply Brief to the
Answer mailed February 08, 2007. Hence, the May 09, 2007
Communication has not been considered as part of the Appeal Record.
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