Ex Parte Bian

Board of Patent Appeals and Interferences

Aug 6, 2008

10396013 (B.P.A.I. Aug. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JINRU BIAN
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Appeal 2008-3625
Application 10/396,013
Technology Center 1700
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Decided: August 6, 2008
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Before CHUNG K. PAK, CHARLES F. WARREN, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.
ORDER REQUIRING APPELLANT
TO BRIEF AN ADDITIONAL MATTER

Pursuant to 37 C.F.R. § 41.50(d), Appellant is ordered to perfect their
Appeal under 35 U.S.C. § 134(a) by clarifying the status of the appeal as to
the Examiner’s obviousness-type double patenting rejection in a
supplemental Brief. Failure to clarify the appeal status of the obviousness-
type double patenting rejection will result in dismissal of the appeal as to the
affected claims which are all of the claims on appeal.

Appeal 2008-3625
Application 10/396,013

ANALYSIS
In the Supplemental Examiner’s Answer dated September 25, 2007,
which was submitted by the Examiner subsequent to our earlier Remand
Decision dated August 30, 2007 (“Remand”), the Examiner maintains three
grounds of rejection, each applicable to appealed claims 1-7, 11, and 12,
which are all of the appealed claims (Supp. Ans. 4-9). The third maintained
ground of rejection is an obviousness-type double patenting rejection of
appealed claims 1-7, 11, and 12 over claims 1-6 of U.S. Patent No.
7,241,725, which patent issued from U.S. Application No. 10/670,587.1
Like all other rejections adhered to by the Examiner with respect to the
claims on appeal, the aforementioned obviousness-type double patenting
rejection, as maintained by the Examiner, is before us for review. This is the
case not withstanding the subheading “GROUNDS OF REJECTION NOT
ON REVIEW” and other remarks in the Supplemental Answer that may
have been taken to suggest the contrary (Supp. Ans. 3-4).
37 C.F.R. § 41.31(c) provides that “[a]n appeal, when taken, must be
taken from the rejection of all claims under rejection which the applicant or
owner proposes to contest.” Consistent with the principles of MPEP §§
1214.05 and 1215.03 (8th ed., Rev. 3, Sept. 2005), where Appellant does not
present a ground of rejection for review in the Brief, the appeal is considered
to be withdrawn with respect to that ground and the “withdrawal is treated as

1 The Examiner presents remarks noting that that the previous provisional
obviousness-type double patenting rejection over the claims of then
copending U.S. Application No. 10/670,587 has now matured into the
obviousness-type double patenting rejection of the claims of the issued U.S.
Patent No. 7,241,725 (Supp. Ans. 3-4).
2
Appeal 2008-3625
Application 10/396,013

an authorization to cancel the withdrawn claims.” Where all pending claims
are canceled, the proceeding is complete.
The presentation of inconsistent statements from Appellant regarding
their desire to appeal the obviousness-type double patenting rejection in the
last submitted Brief leaves the Appeal record in an unclear state that requires
additional briefing from Appellant. See Br. 4 and 11; Remand 3.
Consequently, Appellant has not perfected the appeal with respect to all of
the appealed claims subject to the obviousness-type double patenting
rejection in their Brief2, particularly as now maintained by the Examiner
over claims 1-6 of U.S. Patent No. 7,241,725.
Accordingly, Appellant must clarify the record by submitting the
supplemental Brief clearly stating whether or not he is appealing from the
Examiner’s obviousness-type double patenting rejection. If it is not being
appealed, the appeal will be dismissed as to all of the affected claims. If it is
being appealed, Appellant should so state and furnish any relevant argument
he desires the Board to consider with respect to this ground of rejection.
CONCLUSION
Under 37 C.F.R. § 41.50(d) (2007), we give Appellant a
non-extendable time period of ONE (1) MONTH within which to respond to
this order, as required above. Failure to comply with the order
within that time period may result in the sua sponte dismissal
of this appeal. 37 C.F.R. § 41.50(d).

2 We refer to the Appeal Brief filed November 30, 2006, which Brief was
filed in response to Notifications of Non-Compliant Appeal Brief dated
October 13, 2006 and November 16, 2006.
3
Appeal 2008-3625
Application 10/396,013

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDERED

PL Initial:
sld

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