Ex Parte Delange

Board of Patent Appeals and Interferences

Jun 20, 2008

09632075 (B.P.A.I. Jun. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK DELANGE
____________

Appeal 2007-3770
Application 09/632,075
Technology Center 2100
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Decided: June 20, 2008
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Before LANCE LEONARD BARRY, JEAN R. HOMERE, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-13. The Appellant appealed
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2007-3770
Application 09/632,075

II. LAW AND PROCEDURES
"If an Appellant wants an appeal withdrawn or dismissed as to a
particular claim, the proper course of action is to file an amendment
canceling the claim." Ex parte Letts, No. 2007-1392, 2008 WL 275515, at
*4 (BPAI 2008)(citing 37 C.F.R. § 41.33(b)(1)). Furthermore,
[a] withdrawal of the appeal as to some of the claims on appeal
operates as an authorization to cancel those claims from the
application . . . and the appeal continues as to the remaining
claims. The withdrawn claims will be canceled from an
application by direction of the examiner at the time of the
withdrawal of the appeal as to those claims.
MPEP § 1215.03 (8th ed., rev. 6, Sep. 2007).

III. ANALYSIS
Here, "[c]laims 1-13 are pending . . . ." (Supp. Appeal Br. 2.) The
Examiner has rejected each of these claims. (Final Rej. 3-6.)

For his part, the Appellant limits the instant appeal to claims 1-4, 6-
10, 12, and 13 (Supp. Appeal Br. 2; Amended Summary of Claimed Subject
Matter 2), omitting claims 5 and 11 therefrom. Therefore, the latter claims
are "withdrawn from the appeal." Ex parte Ghuman, Appeal No. 2008-
1175, slip op. at 5 (BPAI May 1, 2008). The Examiner, however, maintains
his rejection of claims 5 and 11. (Ans. 3, 5-7.)

IV. CONCLUSION
In an ex parte appeal, the Board of Patent Appeals and Interferences
"is basically a board of review — we review . . . rejections made by patent
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Appeal 2007-3770
Application 09/632,075

examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
Here, after considering the record, we are persuaded that "[t]he appeal is
manifestly not ready for a decision on the merits." Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999).

V. ORDER
For the aforementioned reasons, we remand the application to the
Examiner to cancel claims 5 and 11. Upon canceling these claims, the
Examiner should submit a Substitute Examiner's Answer that does not repeat
the rejections of claims 5 and 11. "Any subsequent Examiner's Answer must
be self-contained with respect to all rejections and arguments; no prior
Answer or Office action may be referenced or incorporated therein." Ex
parte Stolz, No. 2007-2267, 2007 WL 4219724, at *1 (BPAI 2007).

"Because it is being remanded for further action, the application is a
'special' application. MPEP § 708.01(D). Accordingly, it requires
immediate action. Furthermore, the Board should be informed promptly of
any action affecting status of the appeal (e.g., abandonment, issue, or

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Application 09/632,075

reopening prosecution)." Ex parte Feldman, No. 2007-2390, 2008 WL
460205, at *2 (BPAI 2008).

REMANDED

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