Ex Parte Apps

Board of Patent Appeals and Interferences

Jul 14, 2004

09785100 (B.P.A.I. Jul. 14, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM PATRICK APPS
__________
Appeal No. 2004-1356
Application 09/785,100
__________
ON BRIEF
__________
Before KIMLIN, PAK, and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
REMAND TO THE EXAMINER
This case is not ripe for meaningful review and is,
therefore, remanded to the examiner for appropriate action
consistent with the views expressed below.
The examiner stated at page 4 of the Answer that:
Claims 1-51 are rejected under 35 U.S.C.
[§] 102(e) as being anticipated by Apps et al.
(5,651,461)(Apps ‘461). This rejection is set forth in
prior Office action, Paper No. 15.
Claims 15-19, 21-26, 50 and 51 are rejected under
35 U.S.C. [§] 102(e) as being anticipated by Apps et
al. (5,704,482)(Apps ‘482). This rejection is set
Appeal No. 2004-1356
Application No. 09/785,100
1 According to the appellant (Brief, page 6), the claims on appeal are
grouped as follows:
Group 1 - Claims 1, 3-14, 20, 27, 31 and 40-49;
Group 2 - Claim 2;
Group 3 - Claims 15, 17-19, 21-26, 50 and 51;
Group 4 - Claim 16;
Group 5 - Claims 28-30, 32, 34-39; and
Group 6 - Claim 33.
Therefore, for purposes of this appeal, the examiner may limit his or her
findings relating to the Section 102 rejections to representative claims 1, 2,
15, 16, 28 and 33 pursuant to 37 CFR § 1.192(c)(7)(2003).
2
forth in prior Office Action, Paper No. 15.
Claims 28-30 and 32-39 are rejected under 35
U.S.C. [§] 102(b) and/or (e) as being anticipated by
Koefelda et al.(5,465,843). This rejection is set
forth in prior Office Action, Paper No. 15.
Claims 1-51 are rejected under the judicially
created doctrine of [obviousness-type] double patenting
over claims 1-5 of U.S. Patent No. 5,979,654 to
Apps(Apps ‘654). This rejection is set forth in prior
Office Action, Paper No. 15.
Claims 1-51 are rejected under the judicially
created doctrine of [obviousness-type] double patenting
over figures 1-12 [included in the claim] of U.S.
Patent No. D400,012 to Apps (Apps ‘012). This
rejection is set forth in prior Office Action, Paper
No. 15.
The prior Office action referred to by the examiner, however,
does not indicate what features disclosed in Apps ‘461, Apps ‘482
and Koefelda correspond to the claimed features1 and where in
Apps ‘461, Apps ‘482 and Koefelda can such corresponding features
be found(indicate specific columns and lines of the prior art
involved). The prior Office action also does not indicate what
features claimed in Apps ‘654 or Apps ‘012 correspond to the
features recited in claims 1 and 15 and why the claimed features
Appeal No. 2004-1356
Application No. 09/785,100
3
missing, if any, in the claims of Apps ‘654 or ‘012, would have
been obvious to one of ordinary skill in the art. The examiner
provided no obviousness analysis for the obviousness-type double
patenting rejections set forth in the prior Office Action and the
Answer. The examiner also did not respond to the appellants’
argument regarding the “two-way” obviousness test for the
obviousness-type double patenting rejection based on Apps ‘012 in
the prior Office Action and the Answer.
In view of the above deficiencies in the Answer, we remand
this application to the examiner to authorize the submission of a
Supplemental Examiner’s Answer addressing the above deficiencies
pursuant to 37 CFR § 1.193(b)(1)(2003).
This application, by virtue of its “special” status,
requires immediate action. See MPEP § 708.01(d)(8th Ed., Rev. 1,
Feb. 2003). It is important that the Board of Patent Appeals and
Appeal No. 2004-1356
Application No. 09/785,100
4
Interferences be informed promptly of any action affecting the
appeal in this case. See MPEP § 1211 (8th Ed., Rev. 1, Feb
2003).
REMANDED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CKP:dal
Appeal No. 2004-1356
Application No. 09/785,100
5
KONSTANTINE J. DIAMOND
4010 E. 26TH STREET
LOS ANGELES CA 90023