Ex Parte Almstrand et al

Board of Patent Appeals and Interferences

Aug 5, 2008

10289482 (B.P.A.I. Aug. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRISTIAN LARS ALMSTRAND,
PREM AANAND VENKATESAN, HIROYUKI SHINKAI,
HIROKAZU IMAZEKI and MASAHIKO SEKI
____________

Appeal 2008-1670
Application 10/289,482
Technology Center 2600
____________

Decided: August 5, 2008
____________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and KARL D.
EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 5, 9 to 15, and 33. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-1670
Application 10/289,482

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Non-Final Rejection
The non-final rejection was mailed on May 1, 2007, and it indicated
that claims 5, 9 to 15, and 33 are both pending and rejected.
Claim 5 was rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lapstun (U.S. Patent Application Publication No. US 2005/0015163
A1, published Jan. 20, 2005) and Thomas (U.S. Patent No. 6,687,793 B1,
issued Feb. 3, 2004).
Claims 9, 11 to 13, and 33 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over Perine (U.S. Patent No. 5,200,825, issued Apr. 6,
1993) and Lapstun.
Claim 10 was rejected under 35 U.S.C. § 103(a) as being unpatentable
over Perine, Lapstun, and Banker (U.S. Patent No. 5,317,391, issued May
31, 1994).
Claim 14 and 15 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perine, Lapstun, and Thomas.
Appeal Brief
The Appeal Brief was filed on May 22, 2007, and Appellants
indicated that “[c]laims 5, 9-15, and 33 have been more than twice rejected,”
and that “[t]he rejections of Claims 5 and 9-15 are the subject of this
appeal.” Brief 2.
Appellants argued the separate patentability of claims 5, 9, and 10,
and indicated that the rejection of claims 14 and 15 merited reversal “mutatis
mutandis for the reasons set forth above” presumably for claims 5, 9, and 10.
Appellants did not present any patentability arguments for claims 11 to 13.

Appeal 2008-1670
Application 10/289,482

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Examiner’s Answer
The Examiner’s Answer was mailed on September 10, 2007, and the
Examiner repeated the rejections set forth in the Final Rejection.
Reply Brief
The Reply Brief was filed on September 18, 2007, and Appellants
presented arguments for claims 5, and 9 to 11.

DISCUSSION
Appellants can expressly or impliedly withdraw claims on appeal to
the Board. By failing to appeal the rejection of claim 33, Appellants have
impliedly withdrawn claim 33 from appeal to the Board.
If the Appellants limit the claims on appeal, then it is the practice of
the Patent and Trademark Office to treat the claims not pursued in the briefs
as having been withdrawn from appeal. Manual of Patent Examining
Procedure, § 1215.03 (8th ed. Rev. 6, Sept. 2007) states:
A withdrawal of the appeal as to some of the
claims on appeal operates as an authorization to
cancel those claims from the application . . . and
the appeal continues as to the remaining claims.
The withdrawn claims will be canceled from the
application by direction of the examiner at the time
of the withdrawal of the appeal as to those claims.
Examiner[s] may use the following form paragraph
to cancel the claims that are withdrawn from the
appeal at the time of the withdrawal:

Appeal 2008-1670
Application 10/289,482

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The withdrawal of the appeal as to claim [33
in this case] operates as an authorization to
cancel this claim from the application. See
MPEP § 1215.03. Accordingly, claim [33 in
this case] is canceled.

In keeping with the principles set out in MPEP § 1215.03, when
Appellants no longer wish to pursue in the briefs a rejected claim which was
appealed in the notice of appeal, the Appellants should file an amendment
canceling any claim which the Appellants no longer wish to pursue. See 37
C.F.R. § 41.33(b)(1) (2007) and Ex parte Letts,
http://www.uspto.gov/web/offices/dcom/bpai/prec/rh071392_erratum.pdf,
slip op. at 8-9 (Bd. Pat. App. & Int. Jan 31, 2008) (precedential) (“If an
Appellant wants an appeal withdrawn or dismissed as to a particular claim,
the proper course of action is to file an amendment canceling the claim.”)

DECISION
The application on appeal is remanded to the Examiner so that the
Examiner may enter a paper canceling claim 33 which has been impliedly
withdrawn from appeal to the Board. MPEP § 1215.03.

Appeal 2008-1670
Application 10/289,482

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Upon entry of the paper, the application should be returned to the
Board for consideration of the appeal on its merits as to the remaining claims
5, and 9 to 15.
This remand to the Examiner is pursuant to 37 C.F.R. § 41.50(d).

REMANDED

KIS

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