Ex Parte Chang et al

Board of Patent Appeals and Interferences

Apr 27, 2007

10102351 (B.P.A.I. Apr. 27, 2007)

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for publication and is not binding precedent of the Board.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
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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.
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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.

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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

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