Ex Parte Krebs et al

Board of Patent Appeals and Interferences

May 31, 2007

09683735 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT R. KREBS, MICHAEL E. INGRIM,
ERNEST L. PHELPS, VIRGIL B. CANADY,
and BILLY JOE BILLECK JR.
____________

Appeal 2006-3060
Application 09/683,735
Technology Center 1700
____________

Decided: May 31, 2007
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
We remand the application to the Examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. §§ 41.35(b) and
41.50(a)(1) (2006). In particular, we remand this application to the
Examiner for obtaining clarification of the record as to the appeal status of
all of the pending claims.

Appeal 2006-3060
Application 09/683,735

In the second Supplemental Appeal Brief filed on October 14, 2005,
Appellants furnish conflicting information with respect to the claims on
appeal. In the Status of the Claims section of the second Supplemental
Appeal Brief, Appellants note the final rejection of claims 1, 3-15, and 23-40
but state that they “appeal the Examiner’s final rejection of the claims as
they relate to claims 1, 3-7, 38, 39 and 40” (Second Supplemental Br. 2).
However, in the Summary of the Claimed Subject Matter section of the
second Supplemental Appeal Brief, Appellants indicate that “[c]laims 1, 8,
23, 31, 38, 39 and 40 are the only independent claims involved in the present
Appeal” (Id. 2). Also, in the Claims Appendix to the second Supplemental
Appeal Brief, Appellants present all of the rejected claims 1, 3-15, and 23-40
while in the Arguments section of the second Supplemental Appeal Brief,
Appellants present arguments addressing the Examiner’s rejections as to
claims 1, 3-7, and 38-40 only.
In light of the above, Appellants’ second Supplemental Appeal Brief
bears some inconsistencies in describing the rejected claims which
Appellants regard as being on appeal here. These inconsistencies are further
exacerbated by Appellants’ comments at page 2 of the Appeal Brief filed on
November 15, 2004 and page 2 of the Supplemental Appeal Brief filed on
December 21, 2004, wherein Appellants seemingly indicate that rejected
claims 8-15 and 25-37 are not addressed in the Brief because Appellants
contemplate further amendment of same after a Decision on Appeal is
reached with respect to the remaining claims. However, a pro forma
affirmance of the rejection of an unargued rejected claim or a dismissal of
the appeal as to an unargued rejected claim generally results from the failure
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Appeal 2006-3060
Application 09/683,735

to argue a rejected claim in an Appeal Brief. See MPEP § 1205.02 (8th ed.,
Rev. 3, August 2005).
37 C.F.R. § 41.31(c) provides, in part, that: “An appeal, when taken,
must be taken from the rejection of all claims under rejection which the
applicant or owner proposes to contest.” Thus, where Appellants do not
present an Examiner’s ground of rejection for review in the Brief, the appeal
is considered to be withdrawn with respect to that ground and the
“withdrawal is treated as an authorization to cancel the withdrawn claims.”
MPEP §§ 1214.05 and 1215.03 (8th ed., Rev. 3, August 2005). In this
regard, the grounds of rejection presented for review in the second
Supplemental Appeal Brief do not match the Examiner’s statement of the
grounds of rejection set forth in the Final Rejection and the Examiner’s
Answer.
As part of the procedural history of this application, we observe that
the Examiner maintained that the Supplemental Appeal Brief filed on
December 21, 2004 was defective for failure to comply with several
provisions of 37 C.F.R. § 41.37(c) in a Notification of Non-Compliant
Appeal Brief mailed September 22, 2005. In the Answer mailed
January 03, 2006, the Examiner agreed with Appellants’ “Status of Claims,”
“Summary of Claimed Subject Matter,” “Claims Appendix,” and “Grounds
of Rejection to be Reviewed on Appeal” set forth in the second
Supplemental Appeal Brief. Hence, the Examiner accepted the second
Supplemental Appeal Brief as being in compliance with our regulations,
notwithstanding the inconsistencies therein noted above. Thus, the multiple
Briefs and Answer leave the appeal record in an unclear status for our
review.
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Appeal 2006-3060
Application 09/683,735

BASIS FOR REMAND
37 C.F.R. § 41.37(d) (September 2006) provides that Appellants will
be notified of any deficiency in the brief under the rules and provided with
the opportunity to correct the deficiency. See MPEP § 1205.03 (8th ed.,
Rev. 3, August 2005). Here, the Examiner is ordered to clarify the appeal
record by providing Appellants with a Notification and the opportunity to
cure the above-noted inconsistencies in the previously filed Briefs by filing
an Amended Brief (a substitute Brief, not a Supplemental Brief, for the three
current Briefs on file) with a view toward placing this application in better
condition for decision on appeal.
Upon submission of such an Amended Brief, the Examiner should
submit a replacement Answer directed thereto.
ORDER
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to rectify the
above-noted matters. 37 C.F.R. § 41.50(a)(2) (2005) does not apply.
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center involved, for appropriate action in view
of the above comments.
This application, by virtue of its “special” status, requires immediate
action.
REMANDED

clj
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Appeal 2006-3060
Application 09/683,735

Wilsonart International, Inc.
c/o Welsh & Flaxman, LLC
2000 Duke Street, Suite 100
Alexandria, VA 22314
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