Ex Parte Chang et alDownload PDFBoard of Patent Appeals and InterferencesApr 27, 200710102351 (B.P.A.I. Apr. 27, 2007) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 PING CHANG, GREGG WALLACE, RUSSELL J. HILL, CRIS KRONEBERGER, and P.A. JOEL SMITH ____________ Appeal 2006-3307 Application 10/102,351 Technology Center 1700 ____________ Decided: April 27, 2007 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and CATHERINE TIMM, Administrative Patent Judges. KRATZ, Administrative Patent Judge. ORDER REMANDING TO THE EXAMINER We remand the application to the Examiner for further consideration and explanation of issues raised by the record. 37 C.F.R. § 41.50(a)(1) (2006). On January 04, 2006, the Appellants filed an Appeal Brief, including an Evidence Appendix identifying, inter alia, a “Japanese Patent 05326507 to Sato et al.,” including an English language translation thereof, as evidence Appeal 2006-3307 Application 10/102,351 being relied upon by the Appellants. A statement describing the location in the record where the evidence was introduced into the record was identified in the Evidence Appendix and a copy of the evidence accompanied the Brief. See 37 C.F.R. § 41.37(c)(ix) (2006)). Also, the Appellants presented arguments against the Examiner’s obviousness rejection in the Brief that, in part, rely on Sato et al. as evidence in support of a “teaching away” argument (Br. 15-16). In the Examiner’s Answer (Mail Date: April 19, 2006), the Examiner references the Evidence Appendix and notes that Sato was no longer being relied upon by the Examiner. (Answer 7). However, the Examiner does not address Appellants’ “teaching away” argument and the relied upon evidence in support thereof in the Answer with respect to the obviousness rejection. On June 16, 2006, Appellants submitted a Reply Brief noting, inter alia, the Examiner’s alleged oversight and failure to fully address Appellants’ “teaching away” arguments, which are allegedly supported by Sato (Reply Br. 5 and 6). The Reply Brief was noted as being entered and considered, without further comment, by the Examiner as set forth in a Communication mailed August 28, 2006. In light of the above, we remand this application to the Examiner to fully address Appellants’ “teaching away” arguments in the Brief and Reply Brief and the relied upon Sato reference in a Supplemental Answer, if the Examiner maintains the stated obviousness rejection after review thereof. In so doing, the Examiner must explain why the Appellants’ evidence is not persuasive of a teaching away, a lack of suggestion for the proposed modification or a lack of a reasonable expectation of success for the proposed modification. 2 Appeal 2006-3307 Application 10/102,351 In responding to this Remand, the Examiner should take into account the persuasiveness of the evidence in support of Appellants’ contentions vis- à-vis the teachings of the relied upon Bergfelt patent. The Examiner should determine whether or not one of ordinary skill in the art would have found that the teachings of Sato outweigh the predictive and suggestive value of the teachings of Bergfelt (the principal applied reference) with respect to the here-claimed subject matter. The Examiner’s full response to Appellants’ arguments and Evidence, properly presented in the Brief, is necessary so that the issues are properly developed and joined for our resolution on appeal. As an additional matter, the Examiner should again review the Reply Brief for compliance with 37 C.F.R. § 41.41. If the Examiner finds that the Reply Brief is in compliance with this Regulation, the Examiner should take this opportunity to fully respond to any additional arguments made therein in a Supplemental Answer. In undertaking the above, the Examiner should review the claims in light of Appellants’ Specification to reassess their scope. In light of this review, the Examiner should fully respond to any arguments made in the Brief and/or Reply Brief that may not been fully responded to in the Answer. 3 Appeal 2006-3307 Application 10/102,351 This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is made for further consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental Examiner's Answer is written in response to this Remand by the Board. REMANDED sld/ls THE BOC GROUP, INC. 575 MOUNTAIN AVENUE MURRAY HILL, NJ 07974-2064 4 Copy with citationCopy as parenthetical citation