Ex Parte Martin et al

Patent Trial and Appeal Board

Jul 16, 2013

10629597 (P.T.A.B. Jul. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BEATRICE MARTIN and JAQUES COUET
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Appeal 2011-004145
Application 10/629,597
Technology Center 2400
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Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

Appeal 2011-004145
Application 10/629,597

2
STATEMENT OF CASE
The Examiner submitted a 2
nd
Examiner’s Answer on May 24, 2010
(“Ans.”) that included a New Ground of Rejection of claim 1 under 35
U.S.C. 112, first paragraph, as failing to comply with the enablement
requirement. Ans. 3. As noted by the Examiner, the Appellants are required
to submit a response in order to avoid sua sponte dismissal of the appeal.
Ans. 13. This response may include (1) an amendment under 35 C.F.R. §
1.111 to reopen prosecution or (2) a reply brief under 37 C.F.R. ¶ 41.41 to
maintain the appeal. Ans. 14. The Appellants submitted an amendment to
the claims and remarks on July 26, 2010 under 37 C.F.R. § 1.111.
The Board’s remand to the Examiner included instructions to take
“further action as may be appropriate.” See Administrative Remand, Sept. 9,
2010. The Examiner’s subsequent Advisory Action and statement that
“[c]laims 1-21 still remain rejection [sic]” do not conform to the
requirements under 37 C.F.R. § 41.39(b)(1) to reopen prosecution. The
current status of Appellants’ application is that Appellants have requested
reopening of prosecution. The rule states:
A request that complies with this paragraph will be entered and
the application or the patent under ex parte reexamination will
be reconsidered by the examiner under the provisions of §
1.112 of this title. Any request that prosecution be reopened
under this paragraph will be treated as a request to withdraw
the appeal.
37 C.F.R. § 41.39(b)(1)(emphasis added). The Advisory Action does not
provide a basis for our jurisdiction. As such, the Appellants response
unambiguously requires that the prosecution for this application is to be
reopened and we do not have jurisdiction pursuant to 35 U.S.C. § 6(b).
Appeal 2011-004145
Application 10/629,597

3
Accordingly, this application is remanded to the Examiner for review as a
request to reopen prosecution under 37 C.F.R. § 1.111.

ORDER
We hereby remand this application to the Examiner for appropriate
action.

REMANDED

ELD