Ex Parte Dawson et alDownload PDFBoard of Patent Appeals and InterferencesMar 11, 200910401861 (B.P.A.I. Mar. 11, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KEITH E. DAWSON and ERIC H. LENZ ____________ Appeal 2008-4565 Application 10/401,861 Technology Center 1700 ____________ Decided: March 11, 2009 ____________ 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 BURNS, DOANE, SWECKER & MATHIS, L.L.P. P.O. BOX 1404 ALEXANDRIA, VA 22313-1404 5 Copy with citationCopy as parenthetical citation