Ex Parte Biles

Board of Patent Appeals and Interferences

Nov 3, 2008

10413579 (B.P.A.I. Nov. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte: STUART DAVID BILES
____________

Appeal No. 2008-2309
Application 10/413,579
Technology Center 2100
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Mailed: November 3, 2008

Before DALE M. SHAW, Chief Appeals Administrator
SHAW, Chief Appeals Administrator.

ORDER REMANDING TO EXAMINER
____________

This application was electronically received by the Board of Patent
Appeals and Interferences on February 14, 2008. A Docketing Notice was
mailed and Appeal No. 2008-2309 was assigned on March 21, 2008. A
review of the application has revealed that the application was not ready for
an appeal. Accordingly, the application is herewith being remanded to the
Examiner. The matter requiring attention is identified below.
Appeal No. 2008-2309
Application No. 10/413,579

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APPEAL BRIEF, APPEALED CLAIMS
Appellant has not appealed all rejected claims. Specifically, a review
of the Grounds of Rejection on the record finds that rejections are
outstanding for the following pending claims: 3, 4, 10, 13 and 14. The
rejected claims that have not been appealed and/or argued for appeal are
claims 3, 4, 10, 13 and 14.

DISCUSSION
The Board of Appeals and Interferences (Board), in Ex parte Ghuman,
http://www.uspto.gov/web/offices/dcom/bpai/prec/rm081175.pdf
(BPAI May 14, 2008) (precedential), held that in appeals where rejected
claims are expressly withdrawn, or are implicitly withdrawn by not
presenting arguments in support of patentability, the Board will remand the
application to the Examiner with instructions to cancel the expressly or
implicitly withdrawn claims. See also Manual of Patent Examining
Procedure (MPEP) § 1215.03 (8th ed. Rev. 6, Sept 2007).

Accordingly, it is ORDERED that the application is Remanded to the
Examiner:
1) to enter a paper canceling claims 3, 4, 10, 13 and 14; and
2) upon entry of the paper, to return the application to the Board for
the consideration of appealed claims;
3) for such further action as may be appropriate.

Appeal No. 2008-2309
Application No. 10/413,579

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CONCLUSION
Accordingly, it is
ORDERED that this application be returned to the Examiner to:
1) to enter a paper canceling claims 3, 4, 10, 13 and 14;
2) for such further action as may be appropriate.

If there are any questions pertaining to this Order, please contact the
Board of Patent Appeals and Interferences at 571-272-9797.

DMS

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