Ex Parte Araki et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10056973 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte TOMINARI ARAKI,
MASANORI NAKANO, KIHACHI SAKAIDA,
and KOUICHI KANNO
______________

Appeal 2010-001381
Application 10/056,973
Technology Center 1700
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Decided: April 30, 2010
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

ORDER DISMISSING APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 10 through 51 in the Office Action mailed
September 21, 2005. The Examiner refused to allow claims 10 through 12,
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14 through 31, and 33 through 51 as subsequently amended, claims 13 and
33 having been cancelled. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2005).
The record shows that a prior merits panel entered a Remand To the
Examiner in this Application requiring the Examiner to obtain an
authoritative translation of Japanese patent document JP 9-176586 and
further consider the grounds of rejection advanced on appeal in light of,
among other things, the authoritative translation. Rem. 4. The Japanese
patent document JP 9-176586 was submitted with the Information
Disclosure Statement filed October 25, 2007, subsequent to the filing of the
Reply Brief on March 22, 2007.
The Remand further required that if the Examiner submitted a
Supplemental Answer in response to the Remand, Appellants must comply
with 37 C.F.R. §41.50(a)(2) (2007), which states that “appellant must within
two months from the date of the supplemental examiner’s answer exercise
one of” the two options set forth “in order to avoid sua sponte dismissal of
the appeal as to the claims subject to the rejection for which the Board has
remanded the proceeding.” Rem. 4. Under 37 C.F.R. §§ 41.50(a)(2)(i) and
(ii), Appellants’ two options are to “[r]equest that prosecution be reopened
before the examiner by filing a reply under § 1.111,” and to “[r]equest that
the appeal be maintained by filing a reply brief as provided in § 41.41.” See
Manual of Patent Examining Procedure (MPEP) §§ 1207.02 and 1121.01
(Rev. 3, August 2005).
In the Supplemental Answer mailed February 22, 2008, the Examiner
supplied and relied on a translation of Japanese patent document
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JP 9-176586 to Miura in setting forth two new grounds of rejection under 35
U.S.C. § 103(a), while maintaining the two grounds of rejection under
35 U.S.C. § 103(a) advanced in the Answer:1
claims 10 through 12, 14 through 21, 25 through 32, 34 through 40, and
44 through 51 over Koike in view of Berler;
claims 22 through 24 and 41 through 43 as unpatentable over Koike in view
of Berler, further in view of Mochizuki;
claims 10 through 12, 14 through 21, 25 through 32, 34 through 40, and
44 through 51 as unpatentable over Koike in view of Miura; and
claims 22 through 24 and 41 through 43 as unpatentable over Koike in view
of Miura, further in view of Mochizuki.
Supp. Ans. 2, 3, 6, 7, and 9; see App. Br. 3; Ans. 3 and 5.
On this record, we find the Examiner considered the two grounds of
rejection, which encompassed all appealed claims, advanced in the Answer
and in substance modified both grounds by relying on Miura instead of
Berler in the Supplemental Answer to further reject all of the appealed
claims even though the two grounds of rejection advanced in the Answer
were maintained in the Supplemental Answer.
The record further shows that the Examiner specifically identified the
two grounds of rejection including Miura as new grounds of rejection in the
Supplemental Answer, and a Technical Center Director Designee signed the
Supplemental Answer. Ans. 2, 7, and 12. Thus, Appellants had ample
notice of the new grounds of rejection and thus, that a reply was due
pursuant to 37 C.F.R. §§ 41.39(b) even though the Supplemental Answer did

1 The listing of claims in these grounds reflects cancellation of claims
13 and 33. See above p. 2.
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not set a two month time period for a reply as specified in that rule. See
MPEP § 1207.03(Rev. 3, August 2005).
Therefore, it is clear on the record that in order to continue
prosecution of this Application, Appellants had to file a reply as specified in
37 C.F.R. §§ 41.39(b) and 41.50(a)(2). Indeed, the two options for a proper
reply in order to avoid sua sponte dismissal of the appeal as to the subject
claims are the same in each of these rules. Cf. MPEP § 1207.02 with MPEP
§ 1121.01 (Rev. 3, August 2005).
The record does not reflect that Appellants filed a reply to the
Supplemental Answer.
Accordingly, because Appellants did not file a reply and the
maintained and new grounds of rejection encompass all appealed claims, it is
ORDERED that the Appeal filed April 24, 2006, is dismissed.
This Application is being returned to the Examiner, via the Office of a
Director of the Technology Center, for further action as may be appropriate.
DISMISSED

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