Ex Parte Anderson

Board of Patent Appeals and Interferences

May 19, 2008

10663498 (B.P.A.I. May. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES SCOTT ANDERSON
____________

Appeal 2008-2139
Application 10/663,498
Technology Center 3600
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Decided: May 19, 2008
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

REMAND ORDER

Appeal 2008-2139
Application 10/663,498

STATEMENT OF THE CASE
(1) Appellant and jurisdiction
James Scott Anderson (Appellant) appeals from a Final Rejection set
forth in the Final Office Action (Off. Act.) mailed on November 20, 2006.
35 U.S.C. § 134(a) (2002).
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
(2) Filing date and real party in interest
The application on appeal was filed on September 16, 2003.
Appellant is the real party in interest (App. Br. 2).
(3) Claims and arguments on appeal
Claims 1, 2, 4-7, 10-17, and 20-51 are pending in the application
(App. Br. 4).
Claims 1, 10-13, 16, and 23-26 were finally rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Downing1 (Off. Act. 2).
Claims 2, 15, 17, and 28 were finally rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Downing and
Schmeida2 (Off. Act. 3).
Claims 4-7 and 20-22 were finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Downing and Hutchens3 (Off.
Act. 4).

1 U.S. Patent 6,604,789 B1, issued August 12, 2003.
2 U.S. Patent 5,727,818, issued March 17, 1998.
3 U.S. Patent 5,581,921, issued December 10, 1996.
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Appeal 2008-2139
Application 10/663,498

Claims 14 and 27 were finally rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Downing and Roche4 (id.).
Claims 34-38, 40-47, and 49-51 were finally rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Weller5 and
Schmeida (Off. Act. 5).
Claims 39 and 48 were finally rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Weller, Schmeida and Roche
(Off. Act. 6).
The Final Office Action states: “[a] shortened statutory period for
reply is set to expire 3 months or thirty (30) days, whichever is longer, from
the mailing date of this communication” (Off. Act. 1).
The Final Office Action further states: “[f]ailure to reply within the
set or extended period for reply will, by statute, cause the application to
become ABANDONED.” (Id.).
A Notice of Appeal was timely filed on February 20, 2007.
According to the Notice of Appeal, “[a]pplicant hereby appeals to the
Board of Patent Appeals and Interferences from the last decision of the
examiner” (Notice of Appeal). According to the Administrative Record, the
last decision of the Examiner was the Final Office Action mailed
November 20, 2006.
An Appeal Brief (App. Br.) was timely filed on April 12, 2007.

4 U.S. Patent 5,384,999, issued January 31, 1995.
5 U.S. Patent 3,526,050, issued September 1, 1970.
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Appeal 2008-2139
Application 10/663,498

The Appeal Brief makes the following statements regarding the status
of the claims:
1. “Claims 1, 2, 4-7, 10-17, and 20-51 are pending the in the
application” (App. Br. 4).
2. “Claims 29-33 stand withdrawn” (id.).
3. “Claims 1, 2, 4-7, 10-17, 20-28, and 34-51 stand finally rejected”
(id.).
4. “Claims 1, 10-13, 16, 23-26, 34-38, 40-47, and 49-51 are the
subject of this appeal” (id.).
In the body of the Appeal Brief, Appellant limits the discussion and
argument to claims 1, 10-13, 16, 23-26, 34-38, 40-47, and 49-51.
Appellant does not discuss the Examiner's rejection of claims 2, 4-7,
14, 15, 17, 20-22, 27, 28, 39, or 48; nor does Appellant include these claims
in the Claims Appendix of the Appeal Brief. Appellant has not, however,
submitted an amendment canceling claims 2, 4-7, 14, 15, 17, 20-22, 27, 28,
39, and 48.
In due course, the Examiner entered an Examiner’s Answer (Ans.),
mailed August 7, 2007.
The Answer, like the Appeal Brief, is limited to a discussion of the
rejection of claims 1, 10-13, 16, 23-26, 34-38, 40-47, and 49-51 (see
generally Ans. 3-6).
A Reply Brief was timely filed on October 9, 2007.
The Reply Brief (Reply Br.) limits its discussion to claims 1, 16, 34,
and 43 (see generally Reply Br. 1-4).
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Appeal 2008-2139
Application 10/663,498

DISCUSSION
An applicant seeking administrative review of a final rejection must
file a notice of appeal. 35 U.S.C. § 134(a); 37 C.F.R. § 41.31(a) (2006).
In the case before us, Appellant filed a Notice of Appeal “to the Board
of Patent Appeals and Interferences from the last decision of the examiner.”
The Notice of Appeal in this case did not state whether all, or less than all,
of the rejected claims were appealed.
In the Appeal Brief, Appellant does not expressly state that claims 2,
4-7, 14, 15, 17, 20-22, 27, 28, 39, and 48 are withdrawn from the appeal.
Instead, Appellants expressly stated that only “[c]laims 1, 10-13, 16, 23-26,
34-38, 40-47, and 49-51 are the subject of "this appeal” (App. Br. 4). In
addition, Appellants have not submitted an amendment canceling claims 2,
4-7, 14, 15, 17, 20-22, 27, 28, 39, and 48. In an appeal brief, an applicant
can withdraw an appeal as to some of the rejected claims. An applicant can
withdraw claims by an expressed or implied statement. In the case before
us, Appellants did not provide an express statement of withdrawal of claims
2, 4-7, 14, 15, 17, 20-22, 27, 28, 39, and 48, but instead limited the appeal to
claims 1, 10-13, 16, 23-26, 34-38, 40-47, and 49-51. Appellant has not
appealed claims 2, 4-7, 14, 15, 17, 10-22, 27, 28, 39, and 48 and has not
challenged the Examiner’s rejection of these claims. Thus, we treat these
claims as withdrawn from the appeal.
If upon filing an appeal brief, the applicant limits the claims to be
considered on appeal, then it is the practice of the Patent and Trademark
Office to treat the claims not pursued in the appeal brief as having been
withdrawn from the appeal. Manual of Patent Examining Procedure
(MPEP) § 1215.03 (8th ed. Rev. 5, Sept. 2006) states:
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Appeal 2008-2139
Application 10/663,498

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:
. . .
The withdrawal of the appeal as to claims [2, 4-7,
14, 15, 17, 20-22, 27, 28, 39, and 48 in this case] operates
as an authorization to cancel these claims from the
application. See MPEP § 1215.03. Accordingly, these
claims [2, 4-7, 14, 15, 17, 20-22, 27, 28, 39, and 48 in
this case] are canceled.

Consistent with the principles set out in MPEP § 1215.03, when an
applicant no longer wishes to pursue in the appeal brief rejected claims
which were appealed in the notice of appeal, the applicant should file an
amendment canceling any claim which the applicant no longer wishes to
pursue. See 37 C.F.R. § 41.33(b)(1) (2006) 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) ("[i]f 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 claims 2, 4-7, 14, 15, 17, 20-22, 27,
28, 39, and 48. MPEP § 1215.03.
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Appeal 2008-2139
Application 10/663,498

Upon entry of the paper, the application should be returned to
the Board for consideration of the appeal on its merits as to remaining
claims 1, 10-13, 16, 23-26, 34-38, 40-47, and 49-51.

REMANDED

clj

JAMES SCOTT ANDERSON
1214 HILLWOOD COURT SE
ATLANTA, GA 30316-2660

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