Ex Parte Chatterjee et alDownload PDFBoard of Patent Appeals and InterferencesSep 22, 201011052216 (B.P.A.I. Sep. 22, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/052,216 02/08/2005 Siddhartha Chatterjee YOR920040301US1 YOR.538 6065 48150 7590 03/09/2011 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER LINDLOF, JOHN M ART UNIT PAPER NUMBER 2183 MAIL DATE DELIVERY MODE 03/09/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SIDDHARTHA CHATTERJEE and JOHN A. GUNNELS ____________ Appeal 2009-007818 Application 11/052,2161 Technology Center 2100 ____________ Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and JAMES R. HUGHES, Administrative Patent Judges. LUCAS, Administrative Patent Judge. ORDER REMANDING TO THE EXAMINER This is a response to Appellants’ Request for Rehearing from a Decision of this Board dated September 23, 2010. The appeal of claims 1 to 15 and 17 to 20 was from the Final Rejection dated August 6, 2007. In our Decision we reversed the anticipation rejection of all of the claims on appeal, entering a new ground of rejection for claim 1 (Final Decision 7). Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over 1 Application filed February 8, 2005. The real party in interest is International Business Machines Corporation. Appeal 2009-007818 Application 11/052,216 Schomberg in view of Lakshmi (id.). We noted in the Final Decision that the Examiner may, as appropriate, make further rejections of the other claims consistent with the decision (id. at 9, middle). In the APPELLANTS RESPONSE IN REQUEST FOR REHEARING filed with the Office on November 21, 2010, Appellants requested rehearing on the new ground of rejection and concurrently submitted a Declaration under 37 C.F.R. § 1.132 from Mr. John A. Gunnels (co-inventor). The presence of new evidence (to wit, the Declaration) requires that the application be remanded to the Examiner for consideration. (See MPEP 1214.01, § I). Accordingly, it is ORDERED that the appeal be remanded to the Examiner: 1) to consider Appellants’ response to the new ground of rejection; 2) to consider Mr. Gunnels’s Declaration under 37 CFR § 1.132; and 3) for such further action as may be appropriate. REHEARING DENIED REMANDED 2 Appeal 2009-007818 Application 11/052,216 peb MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 3 Copy with citationCopy as parenthetical citation
