Ex Parte Young et al

Board of Patent Appeals and Interferences

Feb 20, 2009

10628614 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER Y. B. YOUNG, JOHN A. KNOCH,
and JASON W. MCNICHOLS
____________

Appeal 2008-5124
Application 10/628,614
Technology Center 2800
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Decided: February 23, 2009
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

REMAND TO THE EXAMINER

We remand this application to the jurisdiction of the Examining Corps
so that the Examiner can take necessary action consistent with our comments
below.
Appeal 2008-5124
Application 10/628,614

Appellants’ Appeal Brief (filed Apr. 11, 2006; “Br.”) and the
Amended Appeal Brief (filed Sept. 10, 2007; “Amended Br.”) are defective
for two reasons.
First, although independent claim 2 is expressly appealed (Br. 4) and
is reproduced in the Claims Appendix (Br. 19), the pending § 103 rejection
of claim 2 has not been argued (Br. 12-15) or even acknowledged (Br. 10).
These circumstances suggest that Appellants have failed to argue appealed
independent claim 2 by unintentional oversight. Appellants must be notified
of this apparent oversight and given an opportunity to either argue the
rejection of independent claim 2 or withdraw the appeal of this claim.
Second, neither the Appeal Brief nor the Amended Appeal Brief
complies with 37 C.F.R. § 41.37(c)(1)(v) Summary of claimed subject
matter. As background, Appellants were notified that the Appeal Brief is
defective in failing to comply with this regulation. (See the “Notification of
Non-Compliant Appeal Brief” mailed Aug. 8, 2007.) Appellants attempted
to cure this defect by filing the Amended Appeal Brief which contains an
“Amended Summary of claimed subject matter”. However, this Amended
Summary also fails to comply with the regulation under consideration. This
is because the Amended Summary recites embodiments disclosed in the
Specification without relating these embodiments to “the subject matter
defined in each of the independent claims involved in the appeal” (§ 41.37
(c)(1)(v)). In addition, we observe that many of the independent and
dependent method claims on appeal have been separately argued, but that
the Amended Summary does not identify every step plus function in these
claims and correspondingly does not identify “the structure, material, or acts
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Appeal 2008-5124
Application 10/628,614

described in the specification as corresponding to each claimed function”
(id.).
In response to this Remand, the Examiner must notify Appellants of
the Appeal Brief and Amended Appeal Brief defects discussed above and
provide Appellants with an opportunity to file a new Amended Appeal Brief
in order to cure these defects. (See the Manual of Patent Examining
Procedure (MPEP) § 1205.03(Rev. 3, Aug. 2005)). If the new Amended
Appeal Brief includes argument directed to the pending § 103 rejection of
independent claim 2, the new Brief must completely replace the previously
filed Briefs, and the Examiner must issue a Supplemental Answer
responding to the claim 2 arguments. (Id.).

REMANDED

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RYAN, MASON & LEWIS, L.L.P.
90 FOREST AVENUE
LOCUST VALLEY, NY 11560

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