Ex Parte Walter

Board of Patent Appeals and Interferences

Feb 11, 2009

10474144 (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ULRICH WALTER
____________

Appeal 2008-4724
Application 10/474,144
Technology Center 1700
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Decided: February 11, 2009
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

We remand this application to the jurisdiction of the Examining Corps
with instruction for the Examiner to notify Appellant of a non-compliant
Appeal Brief.
The need for this notification is revealed by the following
circumstances.
Appeal 2008-4724
Application 10/474,144

Appellant expressly states that "[t]he present Appeal is directed to
Claims 1-6, 21-24, 39, 41, 42, and 44-55" which are all of the claims
pending in the application (App. Br. 2).
Because the Examiner has withdrawn the § 112, first and second
paragraphs, rejections made in the final Office Action (Ans. ¶ bridging 2-3),
the appealed claims are now rejected under 35 U.S.C. § 103(a) only.
Specifically: claims 1-6, 21-24, 39, 41, 42, 44, 45, 47-52, 54, and 55 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kopas in view
of von Rotenhan and further in view of Appellant's prior art admission,
Leschonski, Ross, and "Separation Processes in the Food and Biotechnology
Industries" by Grandison (Ans. 4-9; see also Final Office Action, mailed
Apr. 12, 2007, 4-8); and claims 46 and 53 are correspondingly rejected over
this prior art and further in view of EP 0073581 (Ans. 9-10; see also Final
Office Action, mailed Apr. 12, 2007, 8-9). These § 103 rejections cover all
of the appealed and pending claims in this application.
Appellant inconsistently states that all pending claims are on appeal
and yet presents (and argues) only the § 103 rejection of claims 1-6, 21-24,
39, 41, 42, 44, 45, 47-52, 54, and 55 (App. Br. 9). Appellant does not
present or otherwise acknowledge the Examiner's § 103 rejection of
remaining appealed claims 46 and 53.
Under these circumstances, the record lacks clarity as to whether
Appellant's failure to address the rejection of claims 46 and 53 is intentional
or unwitting.
In order to clarify the record in this matter, the Examiner must notify
Appellant that the Appeal Brief does not comply with 37 C.F.R. § 41.37
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Appeal 2008-4724
Application 10/474,144

(c)(1) in accordance with the Manual of Patent Examining Procedure
(MPEP) § 1205.03 (Rev. 3, Aug. 2005).

This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
not made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) does not apply.
REMAND

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