Ex Parte Azpitarte

Board of Patent Appeals and Interferences

May 3, 2007

09971946 (B.P.A.I. May. 3, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEAN-PATRICK AZPITARTE
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Appeal 2007-0263
Application 09/971,946
Technology Center 2100
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Decided: May 3, 2007
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and HOWARD B.
BLANKENSHIP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
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This is an Order remanding this application to the Examiner. From our
initial review of the application and prosecution history, we note a number
of items and issues that need to be addressed and clarified by the Examiner
prior to our decision on the merits.
Appeal 2007-0263
Application 09/971,946

First, Appellant has included a proposed amendment to the claims
with the Appeal Brief, filed April 25, 2006, which has not been addressed or
entered by the Examiner. The Appendix to the Appeal Brief was filed with
the amendment to the claims, which is not presently entered. Therefore, the
Brief is non-compliant and a new Brief is required.

Second, the Brief is non-compliant with respect to the Summary of the
Claimed Invention. MPEP 1205.02 (Eighth Edition, August 2001; Fourth
Revision October 2005) sets forth the requirements for the contents of the
Brief. Specifically, the Summary of the Claimed invention is as follows:

(v) Summary of claimed subject matter. A concise explanation
of the subject matter defined in each of the independent claims
involved in the appeal, which shall refer to the specification by page
and line number, and to the drawing, if any, by reference characters.
[While reference to page and line number of the specification requires
somewhat more detail than simply summarizing the invention, it is
considered important to enable the Board to more quickly determine
where the claimed subject matter is described in the application.] For
each independent claim involved in the appeal and for each dependent
claim argued separately under the provisions of [37 CFR
§ 41.37](c)(1)(vii) …, every means plus function and step plus
function as permitted by 35 U.S.C. 112, sixth paragraph, must be
identified and the structure, material, or acts described in the
specification as corresponding to each claimed function must be set
forth with reference to the specification by page and line number, and
to the drawing, if any, by reference characters. See 37 CFR
§ 41.37(c)(1)(v)
If appellant does not provide a summary of the claimed subject
matter as required by 37 CFR 41.37(c)(1)(v), the Office will notify
appellant of the defect in the brief and give appellant a time period
within which to file an amended brief. See 37 CFR § 41.37(d).

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Appeal 2007-0263
Application 09/971,946

Here, we find that every claim on appeal contains means plus function
limitations and many of the claims are separately argued in the Brief, but the
Summary of the Claimed Invention does not provide specific correlations of
the means limitations to the corresponding structure, acts or materials in the
specification as required by 37 CFR § 41.37(c)(1)(v). Rather, the Summary
of the Claimed Invention merely includes general citations to portions of the
specification. We find this insufficient correlation of the means plus
function limitations to permit a meaningful review of the claimed invention.
Therefore, Appellant must provide an appropriate Summary of the Claimed
Invention as required by 37 CFR § 41.37(c)(1)(v).

Accordingly, it is

ORDERED that the application is returned to the examiner to:

(1) address the merits of the after final amendment dated Apr. 25,
2006 and mail a communication to Appellant. The Examiner should require
Appellant to correct the claims appendix to the Appeal brief, if the
amendment is not entered.
(2) require a new Appeal Brief in compliance with 37 CFR
§ 41.37(c)(1)(v) and vacate the Examiner's Answer , if needed, to clarify the
record for review; and
(3) take such further action as may be appropriate.

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Appeal 2007-0263
Application 09/971,946

REMANDED

ELD

Barry L. Kelmachter
BACHMAN & LaPOINTE, P.C.
Suite 1201
900 Chapel Street
New Haven CT 06510-2802
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