Wednesday, January 09, 2013

The hazards of relying on modified standard tests


As to modified "standard" tests:

Mitsubishi opted to define its invention in terms of a modified test. The examiner does not conduct experiments30 and cannot be faulted for an inability to be more precise about how Mitsubishi's test relates to the standard test. Mitsubishi, by contrast, is in the best position to delineate clearly the relationship between the two tests but has not done so.

note 30: In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).

Of raising new issues:

The examiner only uses Asai to reject claims 9, 11, 21 and 23, all of which incorporate the limitations of claim 5. The examiner does not use Asai to reject claim 5. Nevertheless, in its appeal brief, Mitsubishi relies on the limitations of claim 5, not the additional limitations of the rejected claims, to challenge the rejection.32 The reply attacks the examiner's finding that Asai teaches a "condenser paper"33 (an alternative limitation of claims 9, 11, 21 and 23), but a reply brief is rarely an appropriate place to raise an argument for the first time,34 hence we do not address the new argument.

note 34: Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 728 (Fed. Cir. 2002) (declining to reach issues first raised in the reply); 37 C.F.R. ยง 41.41(b)(2).

All rejections affirmed.


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