Ex Parte Dawson et al

Board of Patent Appeals and Interferences

Mar 11, 2009

10401861 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH E. DAWSON and ERIC H. LENZ
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Appeal 2008-4565
Application 10/401,861
Technology Center 1700
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Decided: March 11, 2009
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
A review of the present record before us leads us to conclude that this
case is not in condition for a decision on appeal. We remand the application
to the Examiner for consideration and explanation of issues raised by the
record. 37 C.F.R. §§ 41.35(b) and 41.50(a)(1).

Appeal 2008-4565
Application 10/401,861

In particular, we remand this application to the Examiner to clarify the
record as to the rejections that are on appeal.
Relevant Procedural History
In the Office Action mailed February 7, 2006, the Examiner presented
a prior art rejection of claims 44, 45, and 53 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kanno, DeBartolo and
Gilchrist; claims 51, and 58 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Kanno, DeBartolo and Leavitt; claim 46 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Kanno,
DeBartolo, Gilchrist and Halpin; and claims 9, 47-49, 54, and 55 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Kanno,
DeBartolo, and Halpin. (¶¶ 11-14).1
In the Final Rejection mailed July 15, 2006, the Examiner presented a
prior art rejection of claims 44, 45, and 53 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kanno, Stefani and Gilchrist;
claim 46 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Kanno, Stefani, Gilchrist and Halpin; and claims 9, 47-49, 54,
and 55 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Kanno, Stefani, and Halpin. (¶¶ 5-7).2

1 This Office action indicated that claims 1, 3-15, 17, 18, 20, 22-27, 52, 56,
and 57 had been rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Kanno and DeBartolo.
2 This Office action indicated that claims 1, 5, 8, 10-18, 21-27, 50-52, and
56-59 had been rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Kanno, Stefani and DeBartolo.
2
Appeal 2008-4565
Application 10/401,861

In the Examiner’s Answer mailed October 18, 2007, the Examiner
presented a prior art rejection of claims 44, 45, and 53 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Kanno, Stefani,
DeBartolo and Gilchrist; claim 46 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Kanno, Stefani, DeBartolo, Gilchrist and
Halpin; and claims 9, 47-49, 54, and 55 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Kanno, Stefani, DeBartolo, and
Halpin. (¶¶ 5-7).3
Appellants appealed the final rejection of claims 1, 5, 8-18, 21-27, and
44-59. (See Substitute Appeal Brief dated July 12, 2007).
In rebuttal to the § 103 rejections of claims 9, 44, 45-49, and 53-55,
Appellants in the Brief, dated July 12, 2007, indicated that the claims were
dependent upon independent claim 1. Appellants asserted that the rejection
of these claims were improper because the DeBartolo reference was utilized
to reject the subject matter of independent claim 1. Appellants asserted that
the DeBartolo reference was not utilized to reject the subject matter of
claims 9, 44, 45-49, and 53-55. (App. Br. 26-31).
The Examiner in the Answer indicated that the claims 44, 45-49, and
53-55 were rejected over the combined teachings of, inter alia, the Kanno,
Stefani, and DeBartolo references.4 (Ans. ¶¶ 5-7).

3 This Office action indicated that claims 1, 5, 8, 10-18, 21-27, 50-52, and
56-59 had been rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Kanno, Stefani and DeBartolo.
4 The remaining references utilize to reject the claimed subject matter have
been excluded from this discussion in order to focus on the perceived
inconsistency in the rejections.
3
Appeal 2008-4565
Application 10/401,861

In view of the above confusing procedural history of the present
application, it is not clear what rejection is before us. Specifically, the
record is not clear as to whether the DeBartolo reference is included as part
of the prior art relied upon in rejecting the subject matter of claims 44, 45-
49, and 53-55 on appeal. If the appealed claims are properly rejected
including the DeBartolo reference as stated in the Answer, it appears that
Appellants have not properly responded to the rejection presented for
review. That is, Appellants have not addressed such a rejection including
the DeBartolo reference. If, on the other hand, the statement of the
rejections appearing in the Final Rejection are correct, it appears the
Examiner has inadvertently included the DeBartolo reference in the
statement of rejections for claims 44, 45-49, and 53-55 and has not
adequately addressed Appellants’ arguments presented in the Appeal Brief.5
Upon return of this application, the Examiner is instructed to (1)
clearly identify the prior art relied upon in the statement of rejections and (2)
set forth a clear basis for rejecting the claims on appeal (i.e., clarify the
above discussed apparent inconsistencies between the rejections listed in the
Final Rejection and the Answer) and (3) either respond to Appellants’
arguments in the Brief concerning the above discussed rejection or notify
Appellants that the Brief is defective for failing to recognize that the
rejection includes DeBartolo. The Examiner is instructed to rectify these
matters by either reopening prosecution or submitting a Supplemental
Examiner's Answer consistent with the instructions above.

5 The Examiner’s Answer does not indicate that new rejections have been
included.
4
Appeal 2008-4565
Application 10/401,861

ORDER
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to rectify the
above-noted matters.
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center involved, for appropriate action in view
of the above comments.
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

PL Initial:
sld

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