Ex Parte Hung et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10927924 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YEN-CON HUNG and DONGHWAN CHUNG
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Appeal 2009-002189
Application 10/927,924
Technology Center 1700
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Decided: June 30, 2009
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
We remand the above-identified application to the jurisdiction of the
Examining Corps in order for the Examiner to take appropriate action
consistent with our comments below.

Appeal 2009-002189
Application 10/927,924

The facts relevant to this remand are as follows.
On December 26, 2007, Appellants filed a Brief on appeal from
the decision of the Examiner dated January 25, 2007 finally rejecting
claims 9, 10, and 15 under 35 U.S.C. § 102(e) as being anticipated by
U.S. Patent 6,296,744 to Djeiranishvili et al. (Djeiranishvili) and
finally rejecting claims 1-5 and 12-14 under 35 U.S.C. § 103(a) as
being unpatentable over Djeiranishvili (App. Br. 1, 10).
On April 01, 2008, the Examiner issued an Examiner’s Answer
in response to the above-noted Appeal Brief. In this Answer, the
Examiner withdrew the § 102 rejection of claims 9 and 10 over
Djeiranishvili (Ans. para. bridging 2-3) but maintained the § 102
rejection of claim 15 over Djeiranishvili (id. at 3) as well as the § 103
rejection over Djeiranishvili (id. at 4). In the Answer, the Examiner
also made a new ground of rejection against claims 9, 10, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Djeiranishvili
(id. at 3, 6). The Answer includes notification to Appellants of their
options for responding to the new ground of rejection as well as
authorization of the new ground of rejection by the T.C. Director
designee (id. at 17-19).
On June 02, 2008, Appellants filed a Reply Brief which
includes arguments against the new ground of rejection (Reply Br. 2-
8). This is one of the permissible options listed by the Examiner in the
Answer for responding to the new ground of rejection.
On August 20, 2008, the Examiner issued a communication to
Appellants which states in its entirety:
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Appeal 2009-002189
Application 10/927,924

The reply brief filed 6/2/08 has been entered and
considered. The application has been forwarded to the
Board of Patent Appeals and Interferences for decision on
the appeal.

Under the facts recounted above, the Examiner’s response to
Appellants’ Reply Brief is inadequate for two fundamental reasons. First,
the Examiner has not expressly stated whether the new ground of rejection
has been maintained. For all we know, based on the record before us, the
Examiner was persuaded by Appellants’ arguments that the new ground of
rejection was improper. Second, even assuming the new ground of rejection
has been maintained, the record before us contains no response by the
Examiner to Appellants’ arguments against this rejection. As a result, the
record for this appeal lacks explanation by the Examiner of why Appellants’
arguments against the new rejection are thought to be unpersuasive.
In light of these circumstances, we lack the information necessary to
process this appeal with respect to the new ground of rejection set forth in
the Examiner’s Answer.
Therefore, the Examiner must respond to this remand by issuing a
Supplemental Examiner’s Answer in response to the Reply Brief filed June
02, 2008. This Supplemental Answer must respond to Appellants’
arguments against the new rejection in one of two ways. The Supplemental
Answer must either expressly withdraw the new rejection or rebut each of
Appellants’ arguments against the new rejection by explaining why these
arguments are unpersuasive. See the Manual of Patenting Examining
Procedure (MPEP) § 1207.05 at II and § 1208 at II (Rev. 3, Aug. 2005).
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Appeal 2009-002189
Application 10/927,924

This remand to the Examiner is for further consideration of a pending
rejection under 37 C.F.R. § 41.50(a)(1). Accordingly, a Supplemental
Examiner’s Answer pursuant to § 41.50(a)(2) is permissible.
For the above-stated reasons, this application is hereby remanded to
the jurisdiction of the Examining Corps.

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EDWARD J. TIMMER
P.O. BOX 770
RICHLAND, MI 49083
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