Ex Parte Daleiden

Board of Patent Appeals and Interferences

Mar 14, 2007

10680763 (B.P.A.I. Mar. 14, 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written for publication and is not binding precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES DALEIDEN
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Appeal 2007-1003
Application 10/680,763
Technology Center 1700
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Decided: March 14, 2007
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This is an appeal from the final rejection of claims 1-40.
Claims 1-4, 16, 17, 28, and 29 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ernst. Claims 5-15, 18-27, and 30-40 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over any one of
Erdmannsdorfer, Uebelhoer, and Kasten.
Appeal 2007-1003
Application 10/680,763

2
With respect to the Examiner’s § 103 rejection, Appellant presents
separate arguments for claims 5, 13, 15, 18, 23, 25, 26, 30, 31, 32, and 33.
For instance, claim 5 defines the biasing element as a leaf spring, claim 13
recites that the biasing element includes a cantilevered annular ring member,
claim 15 recites that the cover includes at least one slot, claim 23 states that
the biasing element is integrally-formed with a bottom portion of the base,
and claim 30 recites that the shell, biasing element, and attachment member
are injection molded as a single component. Unfortunately, we have
searched the Examiner’s Answer in vain for the Examiner’s position with
respect to these separate arguments. The Examiner has simply failed to
address these arguments, and it is not apparent from the Answer that the
Examiner has considered and examined these claimed features.
Accordingly, this application is remanded to the Examiner for the
purpose of directing the Examiner to address the separate arguments of
Appellant noted above and, if necessary, to afford the Examiner the
opportunity to complete the examination of the separately argued claims.
Also, the Examiner should consider a rejection of claims 1-4, 16, 17,
28, and 29 under 35 U.S.C. § 103 inasmuch as it appears that Ernst does not
describe a biasing element that is integrally-formed as one piece with the
housing. Unless the Examiner can further explain otherwise, it would seem
that spring clip (38) of Ernst is a separate element that is connected to the
housing but not formed integrally therewith. The disclosure of Ernst
Appeal 2007-1003
Application 10/680,763

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referenced by the Examiner (col. 3, ll. 21-31) does not describe the spring
clip as integrally formed as one piece with the housing.
This Remand to the Examiner pursuant to 37 CFR § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 CFR §
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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