Ex Parte Bian

Board of Patent Appeals and Interferences

Aug 30, 2007

10396013 (B.P.A.I. Aug. 30, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JINRU BIAN
____________

Appeal 2007-2205
Application 10/396,013
Technology Center 1700
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Decided: August 30, 2007
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Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This appeal involves claims 1-7, 11, and 12. We remand the
application to the Examiner for consideration and explanation of issues
raised by the record. 37 C.F.R. §§ 41.35(b) and 41.50(a)(1) (2006).
Appeal 2007-2205
Application 10/396,013

In particular, we remand this application to the Examiner to clarify the
record as to the status of the Application, the pending claims, and the
rejections being maintained by the Examiner.
Procedural History
In the Final Rejection mailed February 03, 2006, the Examiner
presented:
(1) a rejection of claims 1-7, 11, and 12 under the first paragraph of
35 U.S.C. § 112 as lacking in written descriptive support;
(2) a rejection of claims 1-7, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over EP 1072662 A1 in view of WO 01/12740;
(3) a rejection of claim 1-7, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Lee et al. (U.S. Patent No. 6,436,834) in view of
WO 01/12740;
(4) a provisional rejection of claims 1-7, 11, and 12 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over the claims of then copending Application No. 10/670,587.
In an Amendment filed after the Final Rejection on April 06, 2006,
Appellant continued to argue, inter alia, against the propriety of the
Examiner’s provisional obviousness-type double patenting rejection and
indicated that the filing of a terminal disclaimer was moot in light of such
arguments.
In an Advisory Action mailed April 14, 2006, the Examiner found
Appellant’s arguments against the obviousness-type double patenting
rejection and the prior art rejections set forth in the Final Office Action
unpersuasive. However, the Examiner found that the amendment, which
was entered, overcame the § 112, first paragraph rejection.
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Application 10/396,013

In an Appeal Brief filed on August 03, 2006, Appellant did not
identify the obviousness-type double patenting rejection as being a rejection
that was being presented for review and did not present any argument
pertaining to this rejection. However, the Brief filed did state that the appeal
was from “the rejection dated February 03, 2006” (Br. 1).
In a Notification of Non-Compliant Appeal Brief (Notification)
mailed October 13, 2006, the Examiner indicated that the Brief filed August
03, 2006 was defective for, among other things, the failure to include a
concise statement of the obviousness-type double patenting rejection of
claims 1-7, 11, and 12 as an issue on appeal and the failure to present any
arguments against that rejection. Appellant was given a One Month or
Thirty Days (whichever is longer) extendable time period to file an
Amended Brief or other appropriate correction in reply to the Notification to
avoid dismissal of the appeal.
In reply, an unsigned Appeal Brief was filed on November 02, 2006.
Another Notification was mailed on November 16, 2006, identifying
the failure to sign the Brief and providing a new time period for reply.
An executed Amended Appeal Brief was filed on November 30, 2006.
The November 30, 2006 Brief lists the provisional obviousness-type double
patenting rejection of claims 1-7, 11, and 12 as a ground of rejection to be
reviewed on Appeal ( Br. 4). However, in the Argument Section of the
Amended Brief, Appellant states that “Applicants do not appeal the
obviousness type double patenting rejection” (Br. 11; emphasis original).
In the Examiner’s Answer mailed January 30, 2007, the Examiner
substantially agreed with Appellant’s “Grounds of Rejection to be reviewed
on Appeal” set forth in the Amended Appeal Brief of November 30, 2006
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Application 10/396,013

albeit the Examiner noted the following change: “The ODP rejection
(rejection 3) is not being appealed but is only supplied to establish
continuity” (Answer 3). The Examiner did not present the obviousness-type
double patenting rejection in the Grounds of Rejection Section of the
Answer. Consequently, the Answer appears inconsistent and incomplete in
failing to present the obviousness–type rejection or otherwise fully explain
the absence of the presentation of the obviousness–type double patenting
rejection in the Answer given that the Answer notes that the rejection was
being supplied.
Also, as evidenced by the submission of the Examiner’s Answer, the
Examiner appears to have accepted the Amended Appeal Brief of November
30, 2006 as being in compliance with our regulations, notwithstanding the
inconsistencies therein concerning the obviousness-type double patenting
rejection identified above. Thus, the multiple Briefs and Answer, taken in
light of the pre-appeal papers, leave the appeal record in an unclear status for
our review.
BASIS FOR REMAND
37 C.F.R. § 41.31(c) provides, in part, that: “An appeal, when taken,
must be taken from the rejection of all claims under rejection which the
applicant or owner proposes to contest.” Thus, where Appellant does not
present an Examiner’s ground of rejection for review in the Brief or where
Appellant indicates a withdrawal of an appeal from a ground of rejection
maintained by the Examiner, the appeal is considered to be withdrawn with
respect to that ground and the “withdrawal is treated as an authorization to
cancel the withdrawn claims.” MPEP §§ 1214.05 and 1215.03 (8th ed., Rev.
3, August 2005).
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Appeal 2007-2205
Application 10/396,013

In this regard, Appellant affirmatively stated that the provisional
obviousness-type double patenting grounds of rejection is presented for
review on appeal in the “Grounds of Rejection to be Reviewed on Appeal”
section of the Amended Appeal Brief. Yet, at the same time, Appellant
stated in the Argument Section of the Brief that the obviousness-type double
patenting rejection was not being appealed. The Amended Brief is clearly
internally inconsistent with regard to this matter and it is not clear how the
Examiner accepted the Amended Brief as an acceptable reply to the
Notification of Non-Compliant Appeal Brief (Notification) mailed October
13, 2006, which identified a failure to argue the provisional obviousness
type double patenting rejection in a previously presented Brief as a defect
requiring correction.
In addition, the Examiner’s Answer does not clarify the record by
indicating that the obviousness-type double patenting rejection “is only
supplied to establish continuity” without presenting such a rejection for
review in the Answer and without explaining how the Amended Brief was
considered to be an acceptable reply to the October 13, 2006 Notification
(Answer 3). In further regard to this matter, we note that PTO records
reflect that U.S. Application No. 10/670,587, the subject of the provisional
obviousness type-double patenting rejection set forth in the Final Office
Action, issued as U.S. Patent No. 7,241,725 on July 10, 2007.
37 C.F.R. § 41.37(c)(1)(vi) and (vii) (2006) provide that the Appeal
Brief must set forth a “statement of each ground of rejection presented for
review” and “[t]he contentions of appellant with respect to each ground of
rejection presented for review in paragraph (c)(1)(vi) of this section,”
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respectively. See also MPEP § 1205.02 (8th ed., Rev. 3, August 2005;
1200-14 – 1200-15).
Here, the Examiner should clarify the record as to whether or not the
Amended Brief was a sufficiently acceptable reply to the earlier Notification
mailed October 13, 2006 to avoid abandonment and, if so, take appropriate
action in accordance with current Office policy to clarify the record
respecting the obviousness-type double patenting rejection. See MPEP
§ 711.02(a) and 714.03 (8th ed., Rev. 5, August 2006).
If the Application is determined to properly be in a pending status, the
Examiner should clarify the record as to whether a separate rejection of the
pending claims under the judicially created doctrine of obviousness-type
double patenting over the U.S. Application No. 10/670,587, the subject of
the provisional obviousness type-double patenting rejection set forth in the
Final Office Action, now issued as U.S. Patent No. 7,241,725 on July 10,
2007, is being maintained. If so, the Examiner should take appropriate
action consistent with current examining practice and procedure to clarify
the substance of that rejection as now being over the issued U.S. Patent
claims and notify Appellant of the deficiency in the Amended Brief with
respect to that maintained grounds of rejection. Because this course of
action can only be taken on the basis that the Amended Brief filed
November 30, 2007 is determined by the Examiner to be a sufficiently
adequate reply to the October 13, 2006 Notification to save the Application
from abandonment, the Examiner, if such a determination is made, should
provide Appellant with the opportunity to cure the Brief with regard to same
in order to avoid abandonment and/or withdrawal of the appeal and its
consequences with respect to all of the affected appealed claims, with a view
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Application 10/396,013

toward placing this application in condition for decision on appeal with
respect to the issues presented.
If, on the other hand, the Examiner has decided to withdraw the
obviousness-type double patenting grounds of rejection of all of the
appealed claims and the earlier filed Amended Brief is considered an
adequate reply to the earlier defective Brief Notification of October 13,
2006, the Examiner should furnish a Supplemental Answer communicating
such with an explanation as to why this grounds of rejection is no longer
considered to be warranted.
ORDER
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to rectify the
above-noted matters. 37 C.F.R. § 41.50(a)(2) (2005) does not apply.
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center involved, for appropriate action in view
of the above comments.
This application, by virtue of its “special” status, requires immediate
action.
REMANDED

tf/ls

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