Ex Parte Chou et al

Board of Patent Appeals and Interferences

Apr 30, 2008

10663310 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAU-SONG CHOU,
LARRY YUJIRI, and
DAVID P. DIXON
____________

Appeal 2008-1578
Application 10/663,310
Technology Center 2800
____________

Decided: April 30, 2008
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This appeal was taken pursuant to 35 U.S.C. § 134 from the final
rejection of claims 1-65.
Our review of the application leads us to conclude that this appeal is
not in condition for a decision at this time. Therefore, we remand the
Appeal 2008-1578
Application 10/663,310

application to the Examiner to consider the following issues and to take
appropriate action.
The Examiner in the Answer, page 4, contends that Luukanen’s
system can be used in a variety of applications including
sub[-]millimeter range spectroscopy, but he fails to specifically
disclose that an emission spectrum is generated from the sample
from which the chemical and biological materials present in the
sample are detected. However, since spectroscopy inherently
means generation of spectrum of radiation from the sample, and
since the Luukanen system works in the passive mode, it would
have been obvious that by stating that sub[-]millimeter
spectroscopy applications are possible to mean passive
emissions spectra generation as disclosed by Laufer.

In response to the Examiner’s Answer, Appellants filed a Reply Brief
on December 18, 2006. Appellants argue that Luukanen specifically states
that their sub-millimeter wavelength system is an imaging system. In
support of this position, Appellants’ state:
To support Appellant’s position that sub-millimeter wave
radiation can be used for imaging, Appellant hereby provides
the chapter on Terahertz Imaging from Mittleman, D., "Sensing
with Terahertz Radiation". Appellant submits that sub-
millimeter waves are in the terahertz frequency range. Section
3 in the Terahertz lmaging chapter of this book specifically
states [that], “numerous examples of sub-millimeter and
millimeter-wave imaging can be found in the literature.”
Appellant submits that when Luukanen refers to sub-millimeter
spectroscopy, he is only referring to sub-millimeter
spectroscopy for imaging purposes. (Reply Br. 2-3).

The Examiner noted that the Reply Brief had been entered and
considered and forwarded the application to the Board. See Paper mailed
October 4, 2007. Our review of the record reveals that the Examiner has not
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Appeal 2008-1578
Application 10/663,310

indicated whether the evidence (Terahertz Imaging from Mittleman, D.,
“Sensing with Terahertz Radiation”)1 relied upon by Appellants in the Reply
Brief for rebuttal to the Examiner’s rejection of the claims was entered or
not.
Current patent practice and procedure indicates that the Reply Brief
should not include any new or non-admitted or evidence. The Examiner’s
indication that the Reply Brief has been entered does not indicate the status
of the additional evidence. 37 C.F.R. § 41.41 states:
(a)(1) Appellant may file a reply brief to an examiner's
answer within two months from the date of the examiner's
answer.
(2) A reply brief shall not include any new or non-
admitted amendment, or any new or non-admitted affidavit or
other evidence. See § 1.116 of this title for amendments,
affidavits or other evidence filed after final action but before or
on the same date of filing an appeal and § 41.33 for
amendments, affidavits or other evidence filed after the date of
filing the appeal.

(b) A reply brief that is not in compliance with paragraph
(a) of this section will not be considered. Appellant will be
notified if a reply brief is not in compliance with paragraph (a)
of this section.

The present record is unclear as to whether the Examiner has in-fact
considered the additional evidence referenced by Appellants in the Reply
Brief. The Examiner should clarify the present record by indicating (1)

1 A copy of the document was not attached to the Reply Brief filed
December 18, 2006. However, the document was supplied with the Reply
Brief filed May 18, 2006. In response to this Reply Brief (Paper mailed June
22, 2006) the Examiner only indicated “[t]he Reply Brief filed on
05/18/2006 has been noted.”
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Appeal 2008-1578
Application 10/663,310

whether or not the Reply Brief is in compliance with 37 C.F.R. § 41.41; (2)
whether or not additional evidence submitted with the Reply Brief has been
entered and considered; (3) if the evidence has been entered, if appropriate,
provide a statement addressing the sufficiency of the evidence; and (4) if it is
determined that the Reply Brief is not in compliance with 37 C.F.R. § 41.41,
appropriately notify the Appellants.
Accordingly, we remand the application to the Examiner to consider
the above issues and to take action not inconsistent with the views expressed
herein.
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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REMANDED

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