Ex Parte Aoki

Board of Patent Appeals and Interferences

Mar 23, 2006

10442950 (B.P.A.I. Mar. 23, 2006)

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The opinion in support of the remand being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MASASHI AOKI
______________

Appeal No. 2006-0281
Application 10/442,950
_______________

ON BRIEF
_______________

Before FRANKFORT, OWENS, and LEVY, Administrative Patent Judges.

LEVY, Administrative Patent Judge.

REMAND TO THE EXAMINER
Our consideration of the record leads us to conclude that
this application is not in condition for a decision on appeal.
Accordingly, we remand the application to the examiner to
consider the following issues and to take appropriate action.

DISCUSSION
In the final rejection, the examiner indicates (page 2) that
“[c]laims 3-6 stand rejected under 35 U.S.C. § 103(a) as obvious
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over Coburn ‘495 in view of Miller et al.‘301.” In the body of
the rejection (page 3) the examiner asserts that:
Since Applicant has made a critical point of the
knives being moved individually, it is noted that
whether or not the blades are moved in a group or
individually is a well known variable, with either
option being acceptable, as evidenced by Coburn’s
related patent (4,237,761, abstract), Seki ‘933
(lines 21-23, column 1), Lin (abstract) and
Hirakawa (abstract), thus making it all the more
obvious to move the knives individually.

From the examiner’s assertion, we find that the examiner is
relying upon the additional references to show the obviousness of
moving the blades in a group or individually as equivalents of a
well known variable.
In the brief (page 5), appellant lists the rejections of
claims 3-6 as being obvious over Coburn ‘495 in view of Miller,
and additionally discusses Coburn ‘761, which was incorporated by
reference into Coburn ‘495 (col. 5, line 65-68). However, we
find no mention of the Hirakawa, Linn or Seki references in the
brief.
Turning to the examiner’s answer (page 3) the examiner
states “[c]laims 3-6 are rejected under 35 U.S.C. 103(a) as
obvious over Coburn ‘495 (having Coburn ‘761 incorporated
therein) in view of Miller et al. ‘301, Hirakawa et al. ‘677,
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Linn ‘097 and Seki et al. ‘933.” Since the examiner has formally
added the additional references to the rejection, the examiner
should have indicated the rejection as a new ground of rejection.
As set forth in MPEP § 1207.03 [R-3]
New Ground of Rejection in Examiner’s Answer 37 CFR
41.39(a)(2) permits the entry of a new ground of
rejection in an examiner’s answer mailed on or after
September 13, 2004. New grounds of rejection in an
examiner’s answer are envisioned to be rare, rather
than a routine occurrence. For example, where appellant
made a new argument for the first time in the appeal
brief, the examiner may include a new ground of
rejection in an examiner’s answer to address the newly
presented argument by adding a secondary reference from
the prior art on the record. New grounds of rejection
are not limited to only a rejection made in response to
an argument presented for the first time in an appeal
brief. At the time of preparing the answer to an appeal
brief, the examiner may decide that he or she should
apply a new ground of rejection against some or all of
the appealed claims. In such an instance where a new
ground of rejection is necessary, the examiner should
either reopen prosecution or set forth the new ground
of rejection in the answer. The examiner must obtain
supervisory approval in order to reopen prosecution
after an appeal. See MPEP § 1002.02(d) and § 1207.04. A
supplemental examiner’s answer cannot include a new
ground of rejection, except when a supplemental answer
is written in response to a remand by the Board for
further consideration of a rejection under 37 CFR
41.50(a). See MPEP § 1207.05.

I. REQUIREMENTS FOR A NEW GROUND OF REJECTION

Any new ground of rejection made by an examiner in an
answer must be:

(A) approved by a Technology Center (TC) Director or
designee; and
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(B) prominently identified in the “Grounds of Rejection
to be Reviewed on Appeal” section and the “Grounds of
Rejection” section of the answer (see MPEP § 1207.02).
The examiner may use form paragraph 12.154.04.

The examiner’s answer must provide appellant a two-
month time period for reply. The examiner may use form
paragraph 12.179.01 to notify appellant of the period
for reply and to include the approval of the TC
Director or designee. In response to an examiner’s
answer that contains a new ground of rejection,
appellant must either file:

(A) a reply in compliance with 37 CFR 1.111 to request
that prosecution be reopened; or

(B) a reply brief that addresses each new ground of
rejection in compliance with 37 CFR 41.37(c)(1)(vii) to
maintain the appeal.

Appellant must file the reply or reply brief within two
months from the date of the examiner’s answer to avoid
sua sponte dismissal of the appeal as to the claims
subject to the new ground of rejection. See 37 CFR
41.39(b) and subsection “V. APPELLANT’S REPLY TO NEW
GROUNDS OF REJECTION.”
We find from the above passage from the MPEP that a new ground of
rejection made by an examiner in an answer requires the approval
of the Group Director or designee. From our review of the
examiner’s answer, we find no evidence of such approval. Thus,
the examiner’s answer is procedurally flawed. Notwithstanding
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the fact that appellant could have timely petitioned the
propriety of the answer or filed a reply brief, the examiner’s
answer is procedurally flawed, and we have the situation before
us where three of the reference applied against all of the claims
on appeal have not been argued by appellant.
Accordingly, we remand the application to the examiner to
obtain the approval of the Director of the Technology Center for
the new ground of rejection, or from the individual(s) this
responsibility has been delegated to, and to give appellant two
months to respond to the new ground of rejection, as noted in the
passage of the MPEP, recited, supra.

OBSERVATIONS AND REMARKS
We make note of the statement (answer, page 8), with respect to
claim 5, that “it would take a truly retarded individual to not
realize that the outermost knife has to move first.” We do not
condone the examiner’s choice of language in responding to
appellant’s argument. We remind the examiner that the need for
decorum and courtesy cuts both ways.
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Application 10/442,950

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SUMMARY
In light of the above, the examiner should obtain approval
for the new ground of rejection, and take appropriate action.
This application, by virtue of its "special" status, requires an
immediate action. Manual of Patent Examining Procedure (MPEP)
§ 708.01(D)(8th ed., REV. 3, August 2005).

REMANDED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
)
TERRY J. OWENS ) BOARD OF APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

Appeal No. 2006-0281
Application 10/442,950

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