Ex Parte Lamberton et al

Board of Patent Appeals and Interferences

Jul 24, 2007

09654857 (B.P.A.I. Jul. 24, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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 MARC LAMBERTON, JEAN-JACQUES LEGOLL,
PASCAL THUBERT, ERIC LEVY-ABEGNOLI,
and PIERRE SECONDO
____________

Appeal 2007-1356
Application 09/654,857
Technology Center 2100
____________

Decided: July 24, 2007
____________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

REMAND TO THE EXAMINER

We remand this application to the Examiner to resolve the following
issues:
(1) Clarify the record as to whether Appellants’ evidence establishing
common assignment to disqualify the cited Banavar reference (US
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Application 09/654,857

6,662,206 B1) in connection with the rejection of claims 5, 10, and 15
will or will not be entered;

(2) If the evidence is entered, clarify the record as to whether the
Banavar reference also qualifies as prior art under § 102(a) in view of
potential admissions made by the assignee in the patent irregardless of
its date or its disqualification under § 102(e); and

(3) Clarify the status of all claims on appeal in light of the Examiner’s
decision.

Detailed Discussion
The present application is remanded to the Examiner under 37 C.F.R.
§ 41.50 for consideration of evidence submitted after filing the notice of
appeal pursuant to 37 C.F.R. § 41.33(d). The record before us does not
clearly indicate whether such evidence was entered. This deficiency in the
record must be resolved by the Examiner before we will evaluate the
propriety of the Examiner’s rejections involved in the present appeal.
Specifically, in connection with the Examiner’s rejection of claims 5,
10, and 15, Appellants contend that the Banavar reference (US 6,662,206
B1) does not qualify as prior art under 35 U.S.C. § 103(c). To support this
contention, Appellants submit evidence to establish that Banavar and the
claimed invention were commonly assigned at the time the invention was
made (Br. 19).
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This evidence, however, was presented on this record for the first time
in the Appeal Brief filed June 29, 2006.1 Throughout prosecution, all
previous arguments pertaining to the Banavar reference were based on its
scope and content and whether the Examiner established a prima facie case
of obviousness in combining Banavar with various references.2 At no point
throughout prosecution prior to the June 2006 Brief, however, did
Appellants contend that Banavar did not qualify as prior art. In fact,
Appellants’ detailed arguments based on Banavar’s scope and content
suggest that Appellants considered the reference as qualified prior art.
In any event, we recognize that references that qualify as prior art
under § 102(e) may be disqualified under § 103(c) upon submitting evidence
establishing common ownership or assignment at the time the invention was
made. See MPEP § 706.02(l)(1) (Rev. 3, Aug. 2005) (hereafter “MPEP”).
Although only a clear and conspicuous statement is required to satisfy
Appellants’ evidentiary burden,3 such a statement nonetheless constitutes
evidence: evidence that in this case was submitted for the first time in the

1 This Brief was amended on Sept. 13, 2006 in response to a notice
indicating various informalities. Three Appeal Briefs have been filed
throughout prosecution in the present application. A first Appeal Brief was
filed on Aug. 31, 2005, but prosecution was later reopened. A second
Appeal Brief was filed on June 29, 2006. In response to a notice indicating
various informalities, Appellants filed a third Appeal Brief on Sept. 13,
2006. Unless otherwise indicated, we refer to the Sept. 2006 Brief
throughout this opinion.
2 See Response filed Jan. 5, 2006, at 15-21; see also Appeal Brief filed Aug.
31, 2005, at 15; Response filed Dec. 13, 2004, at 14-17.
3 See MPEP § 706.02(l)(2)(II).
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Application 09/654,857

June 2006 Appeal Brief.4 Such newly-submitted evidence -- like all other
evidence submitted for the first time after filing the appeal -- is not entered
as a matter of right. See 37 C.F.R. § 41.33(d);5 see also MPEP § 1206(II).
On this record, it is unclear why Appellants did not seasonably present
the evidence establishing common assignment. Nevertheless, the record
before us is, at best, unclear whether the Examiner entered this new
evidence – evidence that is potentially dispositive of the rejections of claims
5, 10, and 15. The Examiner merely indicates that Appellants’ common
assignment statement “is presented in an untimely manner” and “did not
come up during previous prosecution” (Answer 13-14).
Therefore, we remand the case to the Examiner to clarify the record as
to whether the Appellants’ evidence establishing common assignment will or
will not be entered. See MPEP § 1206(II); see also MPEP § 1211.03.
After deciding whether or not to enter the new evidence, the Examiner
must then reevaluate patentability of the claims in light of this decision.
If the Examiner decides to maintain some or all of the grounds of rejection
previously presented in the Answer, then the Examiner must issue a

4 Merely because the common assignment statement is styled as an argument
in the Appeal Brief and not presented as a separate paper does not affect the
statement’s status as an evidence submission.
5 37 C.F.R. 41.33(d) provides with emphasis added:
(d) (1) An affidavit or other evidence filed after the date of filing an appeal
pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief
pursuant to § 41.37 may be admitted if the examiner determines that the
affidavit or other evidence overcomes all rejections under appeal and that a
showing of good and sufficient reasons why the affidavit or other evidence
is necessary and was not earlier presented has been made.
(2) All other affidavits or other evidence filed after the date of filing an
appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except
as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
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Supplemental Examiner’s Answer setting forth such grounds. The Examiner
is reminded that no new grounds of rejection are permitted in a
Supplemental Answer that is responsive to this type of remand. See MPEP
§ 1207.05(C); see also MPEP § 1207.05(III).
In reevaluating patentability, we remind the Examiner that
disqualifying a prior art reference under § 103(c) by evidencing common
assignment does not apply for prior art that qualifies under § 102(a) (i.e.,
subject matter that was known or used by others before the present
invention). See MPEP § 706.02(l)(3).
This may be the case here. Specifically, Banavar discusses several
known techniques that appear relevant to the subject matter of claims 5, 10,
and 15.6 Although the reference does not provide further details regarding
these known techniques, the assignee of the present application -- which is
the same assignee of the cited patent -- is perhaps in the best position to
explain these techniques further given the potential applicability of these
techniques to at least claims 5, 10, and 15.
To this end, the Examiner may wish to inquire about these techniques
via a Requirement for Information under 37 C.F.R. § 1.105 should further

6 For example, Banavar states that “[a]ny known ‘session outage
notification’ technique…allows the sequencer(s) to detect when the
connection has been broken, and similarly, any known technique for later re-
establishing the connection allows the sequencer to detect when the
connection has been re-established (Banavar, col. 8, ll. 4-8) (emphasis
added). See also id., at column 1, lines 61-67 (background discussion
describing various reasons why subscriber’s access to event message stream
cause interruptions).
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Application 09/654,857

prosecution follow this remand. See MPEP §§ 704.10-14.7 Further
explanation of these techniques and their applicability to at least claims 5,
10, and 15 may be reasonably necessary to determine the scope and content
of the subject matter that qualifies as prior art under § 102(a).
Lastly, we note that Appellants presented an alternative argument to
the § 103(c) argument for the first time in the Reply Brief. See Reply Br., at
12.8 No such argument, however, was presented in the Appeal Brief.
Compare Reply Br. 12 with Br. 19. We consider Appellants’ alternative
argument waived because it was not raised in Appellants’ opening brief. See
Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989, 80
USPQ2d 1839, 1847-48 (Fed. Cir. 2006).

DECISION
The present application on appeal is remanded to the Examiner for
appropriate action in accordance with the foregoing instructions.

7 See also Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283, 73
USPQ2d 1409, 1414 (Fed. Cir. 2005) (“The [USPTO] is clearly entitled to
use section 1.105 to seek information that may support a rejection. Just as
the applicant produces information it deems pertinent to patentability under
section 1.56, the examiner is free to request information under section 1.105
that the examiner deems pertinent to the issue of patentability.”).
8 Specifically, Appellants argue that “[a]lternatively, if the Board finds that
Ganguly-Banavar is a proper combination, then Appellant [sic] kindly
directs the Board’s attention to pages 15-21 of Appellant’s response with a
mailing date of January 3, 2006 as arguments to be incorporated herein”
(Reply Br. 12).
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Because this application has a “special” status, it requires immediate
action. See MPEP § 708.01(D). The Board must be informed promptly of
any action affecting the appeal in this case.

REMANDED

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