Ex parte DEMASTER et al.

Board of Patent Appeals and Interferences

Apr 20, 1998

08295225 (B.P.A.I. Apr. 20, 1998)

Application for patent filed August 24, 1994. This1
application purports to be a continuation of Application
08/035,744, filed March 23, 1993, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT D. DeMASTER,
ALEXANDER R. MITKA,
JOHN V. NOWICKI,
ALEXANDER S. SINCLAIR,
RICHARD E. SKARE, and
MARK W. WEAVERS
_____________
Appeal No. 97-1398
Application 08/295,2251
______________
ON BRIEF
_______________
Before URYNOWICZ, MARTIN, and LEE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
Appeal No. 97-1398
Application 08/295,225
All references herein to the brief are to the replacement2
brief filed February 8, 1996.
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
final rejection of appellants' claims as unpatentable over the
prior art. However, there is some confusion in the record
regarding which claims are on appeal. Appellants' brief at 3,2
under the heading "Status of Claims," identifies the claims on
appeal as claims 2-14, 17, 28, 30-32, 35, and 38-41, the claims
which were rejected in the final Office action (paper No. 15) as
unpatentable over the prior art. However, the Answer (at 1),
under the heading "Status of Claims," states that "upon further
view [sic, review], it has been determined that claims 2, 4-11,
13, 14, 17, 28, 38, 39 and 41 are allowable over the prior art of
record. The rejection of these claims is withdrawn accordingly,
and the comments are drawn to the remaining claims."
Nevertheless, the Answer (at 3-11) repeated the rejections of all
of the pending claims and (at 12-20) added new grounds of
rejection directed to all of the pending claims. Appellants'
reply brief (at 1-2) noted this inconsistency and presumed that
the rejections directed to the allowable claims were an oversight
and could be disregarded. Accordingly, they limited their
Appeal No. 97-1398
Application 08/295,225
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discussion of the old and new rejections to the non-allowable
claims. However, in the Supplemental Examiner's Answer (at 1),
the examiner changed his mind, stating under the heading "Status
of Claims" that "[t]he statement in the examiner's answer mailed
May 9, 1996 was incorrect. Accordingly, the statement of the
status of the claims contained in the appeal brief filed
February 8, 1996 is correct." In spite of this change in the
examiner's position, appellants did not file a supplemental reply
brief challenging the examiner's withdrawal of allowability.
Consequently, we will address the patentability of all of
appellants' pending claims. We affirm in part and add a new
ground of rejection of claim 3 pursuant to 37 CFR § 1.196(b).
The invention relates to a cleaning cassette for cleaning
the audio, video, and erase heads, the capstan, and the tape
guides (e.g., rollers and pins) in a rotary head magnetic tape
recording apparatus, such as videocassette recorder or camcorder,
collectively referred to as a VCR (Spec. at 6, lines 12-17; Spec.
at 8, lines 10-17). Referring to Fig. 3, the cleaning tape
consists of a magnetically recordable tape portion 34 connected
to a leader portion 36 by adhesive tape 42. One or both sides of
the leader tape portion 36 carry layers 52 and 54 of
microabrasive dry scrubbing material for cleaning the capstan
Appeal No. 97-1398
Application 08/295,225
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regardless of which side of the tape is contacted by the capstan.
As shown in Figure 5, the length L of the leader portion is long
enough to permit the microabrasive material to reach capstan 18
but short enough to prevent it from reaching the magnetic heads
(not shown), which could be damaged by this material (Spec.
at 10, line 32-37). The two abrasive layers on the leader
portion can be formed of the same or different materials (Spec.
at 9, line 37 to Spec. at 10, line 1).
The front side of the magnetically recordable tape portion
34 (Fig. 3) carries a layer 46 of magnetically recordable dry
scrubbing material thereon for simultaneously cleaning the rotary
head and causing the display of recorded audio and video
instructions on a television receiver (Spec. at 9, lines 7-10;
Spec. at 11, lines 19-24). As is apparent from Figures 1 and 3,
this layer of cleaning material also cleans the tape guides
(i.e., pins and rollers) that contact the front side of the tape.
The back side of the magnetically recordable tape portion 34 can
be provided with have a layer 48 of dry scrubbing material for
cleaning the tape guides that contact the other side of the tape
(Spec. at 9, line 10). The front and back scrubbing layers 46
and 48 differ from each other in that the front layer includes
Appeal No. 97-1398
Application 08/295,225
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magnetic particles for recording and is smoother (Spec. at 9,
lines 1-13).
The only independent claims are claims 2, 3, and 30.
Appellants' brief, which discusses only the rejections given in
the final Office action, groups the claims as follows (at 8):
(a) claims 2, 4, 5, 11, 17, 28, 38, and 39;
(b) claims 3, 12, and 35;
(c) claim 6;
(d) claim 7;
(e) claim 8;
(f) claims 9 and 10;
(g) claims 13, 14, and 41; and
(h) claims 30-32 and 40.
However, as the examiner correctly notes (Answer at 2), because
claim 40 depends on claim 3 rather than on claim 30, it is being
treated as standing or falling with claim 3.
The broadest independent claim insofar as the composition of
the tape is concerned is claim 3, which reads as follows:
3. A VCR component cleaning cassette for cleaning at least
VCR heads and tape guides comprising:
a videocassette housing having an opening through which tape
is pulled during a play mode;
a supply reel mounted in the housing;
Appeal No. 97-1398
Application 08/295,225
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a takeup reel mounted in the housing; and
a length of tape mounted between the supply reel and the
takeup reel, wherein the tape has a front side which has a
recordable front side scrubbing material for cleaning the heads,
and a backside, wherein the tape comprises magnetic material on
the front side to permit the tape portion to record and play
signals including audio sounds and video images, and wherein the
magnetic material and the scrubbing material are located in the
same length of tape portion to permit simultaneous cleaning and
playing of recorded signals; and
wherein when the cleaning cassette is inserted into the VCR
the tape is capable of cleaning the heads and tape guides with
only the front side of the tape contacting the heads, regardless
of the internal configuration of these components in the VCR.
Unlike claim 2, claim 3 does not recite a leader portion,
let alone a leader portion that carries a scrubbing material for
cleaning the capstan. Nor does claim 3 require a scrubbing
material on the back side of the tape, as required by claims 2
and 30. The only limitations claim 3 places on the composition
of the tape are that its front side have a scrubbing material and
a recordable (but not necessarily prerecorded) magnetic material
located in the same length of the tape portion so as to permit
simultaneous cleaning and playing of recorded signals. As for
the "wherein" clause, appellants have not explained, and it is
Appeal No. 97-1398
Application 08/295,225
As will appear, an identical "wherein" clause constitutes3
an additional limitation in claim 2, which, unlike claim 3, calls
for the tape to include a "tape portion" and a "leader portion."
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not apparent to us, how this clause implies any structural
limitations beyond those expressly recited in this claim. 3
The references relied on by the examiner are:
Sasaki et al. (Sasaki) 3,823,947 Jul. 16, 1974
Siddiq 4,893,209 Jan. 9, 1990
Nagaoka 4,616,274 Oct. 7, 1986
Nelson et al. (Nelson) 0 122 724 Oct. 24, 1984
(European Patent Appln.)
Kubota JP 58-19776 Feb. 4, 1983
(Japan)
Fujimura 61-192017 Aug. 26, 1986
(Japan Laid Open Pub.)
We additionally rely on the following reference in a new
ground of rejection being entered pursuant to 37 CFR § 1.196(b):
Nowicki et al. (Nowicki) 3,978,520 Aug. 31, 1976
In the final Office action, the prior art was applied
against the claims as follows:
• claims 2-6, 11-14, 17, 28, 30-32, 35, 38, 40, and 41 -
Sasaki in view of Siddiq;
• claims 7 and 8 - Sasaki in view of Siddiq and Nelson; and
• claims 9, 10, 17, and 39 - Sasaki in view of Siddiq,
Nagoaka, and Kubota.
Appeal No. 97-1398
Application 08/295,225
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In the new grounds of rejection given in the Answer, the
prior art was applied against the claims as follows:
• claims 2-6, 11-14, 17, 28, 30-32, 35, 38, 40, and 41 -
Fujimura in view of Sasaki;
• claims 7 and 8 - Fujimura in view of Sasaki and Nelson;
• claims 9, 10, 17, and 39 - Fujimura in view of Sasaki,
Nagoaka, and Kubota.
A. The rejections based on Sasaki and Siddiq
Sasaki discloses a cassette-mounted tape consisting of a
magnetic recording tape 1 (having a magnetic recording layer 2
thereon) attached by an adhesive tape 6 to a leader tape 3, which
performs the cleaning operation. While the type of information
to be recorded is not specified, it is apparent from the
structure of the cassette (Fig. 2) that the cassette is of the
audio rather than the video type. Two embodiments are disclosed.
In the first embodiment (Fig. 1), the leader tape surface
opposite to the magnetic layer 2 is exposed to sand blasting or
chemical etching in order to provide a roughened surface for
cleaning the capstan (col. 1, lines 52-56; col. 2, lines 16-22).
In the second embodiment (Fig. 3), both surfaces of the leader
tape are roughened in order to provide cleaning of the magnetic
head and the capstan (col. 2, lines 23-27). Sasaki does not
Appeal No. 97-1398
Application 08/295,225
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disclose that the front and rear surfaces of the leader tape can
have different scrubbing materials, as required by claims 2 and
30.
Siddiq's invention is a cleaning cassette (Fig. 6) for a
VCR. The cassette tape has at least one segment for cleaning the
magnetic head spliced together with at least one segment for
providing diagnostic/instructional information for the user
(col. 1, lines 44-47; Fig. 1). The cleaning segment may take any
of various forms, such as a fabric layer bonded to a polymeric
substrate or a homogeneous material of the type disclosed in
copending application 07/182,829, which is incorporated by
reference (col. 1, lines 53-62). Because the cleaning segment
does not employ a highly abrasive magnetic coating, it is
possible to use liquid cleaners (col. 2, lines 29-32). The
cleaning tape may include cleaning segments of different types to
provide "added cleaning effectiveness" (col. 4, lines 9-12). The
tape may also include a polishing segment following a cleaning
segment (col. 3, line 65 to col. 4, line 4). Siddiq does not
disclose a back side scrubbing material, as required by claims 2
and 30.
The examiner contends that Siddiq satisfies claims 3's
limitation that "the magnetic material and the scrubbing material
Appeal No. 97-1398
Application 08/295,225
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are located in the same length of tape to permit simultaneous
cleaning and playing of recorded signals" and claims 30's similar
limitation. Noting that the claims do not recite that the
magnetic material and the scrubbing material are superimposed one
over the other (Answer at 19), the examiner argues that "the
magnetic material and the scrubbing material of Siddiq are in the
same length, i.e., in the same portion of tape between two points
thereby permitting simultaneous cleaning [and playing]" (Answer
at 5). We agree with appellants that the examiner is incorrect
on this point (Brief at 15). As explained in In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), "the
PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description
contained in the applicant's specification." Because appellants'
specification does not include a definition of the term
"simultaneously," we must give it its usual meaning, i.e.,
"[h]appening, existing, or done at the same time." The American
Heritage Dictionary of the English Language (New College Edition
1975), p. 1207. Thus construed, the claim does not encompass
Appeal No. 97-1398
Application 08/295,225
With respect to claim 3's requirement for different4
scrubbing materials on the front and back sides of the tape, we
note that appellants do not challenge the examiner's taking of
"official notice" that this is "notoriously old and well known in
the art" (Answer at 5). In fact, appellants state that
"[a]lthough tapes may exist which have different cleaning
properties on the front than on the back, whether by design or
coincidence, this has no bearing on the claimed invention" (Brief
at 13-14).
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Siddiq's technique of using alternating cleaning and
instructional segments, which will result in alternating periods
of cleaning and playing. Nor will the limitation in question be
satisfied if, as the examiner contends, it would have been
obvious "to modify the tape portion of Sasaki et al[.] so that
the cleaning of the head is done by the tape portion as in the
cleaning/diagnostic tape taught by Siddiq" (Answer at 6), as this
will also result in alternating periods of cleaning and playing.
Therefore, the rejection of claims 3 and 30 over Sasaki in view
of Siddiq is reversed, as is the rejection of dependent claims
12, 31, 32, 35, and 40, which are grouped therewith.4
Independent claim 2 does not call for simultaneous cleaning
and playing. Instead, it recites, inter alia, a tape portion and
a leader portion, with the tape portion having a scrubbing
material that differs from the scrubbing material on the leader
portion and the leader portion having a length which prevents it
Appeal No. 97-1398
Application 08/295,225
This limitation reads: "wherein when the cleaning5
cassette is inserted into the VCR the tape is capable of cleaning
the heads, tape guides, and capstan with only the front side of
the tape portion contacting the heads, regardless of the internal
configuration of these components in the VCR" (emphasis added).
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from reaching the magnetic heads. We agree with appellants that5
Sasaki and Siddiq do not suggest this combination. Even assuming
for the sake of argument that it would have been obvious to
combine Sasaki's cleaning leader with Siddiq's cleaning/
instructional tape, it would not have been obvious from these
references to make the leader short enough to prevent it from
reaching the magnetic head. Indeed, Sasaki specifically
discloses making the cleaning leader long enough to reach the
magnetic head as well as the capstan (col. 2, lines 43-47).
Consequently, we are reversing the rejection of claim 2 based on
Sasaki in view of Siddiq, as well as the rejection of the
dependent claims that were rejected as unpatentable over these
two references, i.e., claims 4-6, 11, 13, 14, 28, 38, and 41.
The rejections of the remaining dependent claims (i.e., claims 7-
10, 17, and 39) are reversed because the foregoing deficiency is
not cured by the additional references cited against those claims
in the final Office action (i.e., Nelson, Nagaoka, and Kubota).
Appeal No. 97-1398
Application 08/295,225
Our understanding of this reference is based on two6
translations. The first was prepared for the PTO by Schreiber
Translations, Inc. in May 1996, which is the month when the
Answer was mailed. As this translation is not mentioned in or
attached to the Answer, we assume it was not mailed to
appellants, an assumption which is consistent with appellants'
submission of a different translation with their reply brief. A
comparison of the two translations reveals no significant
differences. References hereinafter to the translation of
Fujimura are to appellants’ translation.
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B. The new grounds of rejection based on Fujimura and Sasaki
Fujimura, at page 3 under the heading "Practical Example,"6
describes a cleaning tape which begins as a base film 4 having on
one surface (5) thereof alternating surface portions 6 and 7 of
"different surface roughness" and having formed on the other
surface a magnetic layer 9 (Trans. at 3, lines 12-15). This
tape, when tightly rolled, causes a "back transfer" of the
roughness of surface 5 to the magnetic layer, giving the magnetic
layer alternating areas 10 and 11 of different surface roughness
such that "the part 10 which possesses a large surface roughness
becomes the cleaning tape, and the part 11 which possesses a
small roughness becomes the check tape" (Trans. at 3, lines 20-
22). It is undisputed that at least the "check" tape portions 11
of the recording layer contain recorded audio and video
information which is played during the cleaning process in order
Appeal No. 97-1398
Application 08/295,225
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to "confirm the degree of image and sound recovery" (Trans. at 2,
lines 6-7.).
The examiner contends that Fujimura satisfies the
requirement of claims 3 and 30 for simultaneous cleaning and
playing in several different ways (Suppl. Answer at 2). The
first, which is that the claim language is broad enough to read
on the alternating check and cleaning tape portions, is
unconvincing for the reason discussed above in connection with
Siddiq. Alternatively, the examiner argues that the check
portions 11 also perform some cleaning (Answer at 12-13):
Fujimura et al shows in figure 1 recordable front side
scrubbing material 11, [which] is capable of cleaning the
magnetic heads and tape guides, and backside scrubbing
material 6, which is capable of cleaning capstans.
. . . Material 9/11 is magnetic material as well as
scrubbing material, and since magnetic material is present
this permits audio and video images to be recorded and/or
reproduced. Also, Fujimura et al describes material 11 as a
check portion, i.e., this portion provides a diagnostic
video image in which the image quality is checked.
While we believe it is clear from the foregoing passage that the
examiner is arguing that the check portions 11 also provide some
cleaning, appellants apparently understood the examiner to be
arguing that the cleaning portions 10 are capable of recording
audio and video information for playback during cleaning, because
they contend that "the mere presence of a magnetic material in a
tape layer does not necessarily render that tape capable of
Appeal No. 97-1398
Application 08/295,225
As noted earlier, claim 3 does not require the actual7
recording of audio/information to be played back during cleaning.
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playing video signals. It does not render the tape capable of
playing clear video pictures, such as those recited in claim 12
. . . ." (Reply Brief at 3). This argument is unconvincing
because claim 3 does not require that the tape be capable of
playing back audio and video information with any particular
degree of clarity during cleaning. Instead, the claim is broad
enough to read on a tape which is capable of recording and
playing back audio and video information with a lower degree of
clarity during cleaning (e.g., during Fujimura's cleaning
portions 10) and with a higher degree of clarity when not
cleaning (e.g., during Fujimura's check portions 11). We7
therefore conclude that Fujimura's cleaning portions 10 satisfy
the "simultaneous cleaning and playing" limitation of claim 3.
We also agree with the examiner that Fujimura's check
portions 11 satisfy the "simultaneous cleaning and playing"
limitation, which appellants did not address in the reply brief.
Any doubt that this was how the examiner was relying on Fujimura
should have been dispelled by the following comment in examiner's
Supplemental Answer (at 2):
In the Practical Example section on page 3, lines 20-22 of
appellants' translation of Fujimura the following is
Appeal No. 97-1398
Application 08/295,225
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disclosed: "the part 10 which possesses a large surface
roughness becomes the cleaning tape, and the part 11 which
possesses a small roughness becomes the check tape."
Therefore, both "check tape" 11 and "cleaning tape" 10 have
surface roughness. As [a] result[,] when the rough surfaces
rub against the internal components, cleaning of the
components takes place due to the abrasiveness of the
surfaces.
Nevertheless, appellants did not file a supplemental reply brief
addressing this contention, which strikes us as a reasonable one.
In the absence of any argument or evidence in opposition to the
this contention, we agree with the examiner that Fujimura's check
portions 11 satisfy claim 3's requirement for "simultaneous
cleaning and playing." See In re King, 801 F.2d 1324, 1326,
231 USPQ 136, 138 (Fed. Cir. 1986) (where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in claimed subject matter may,
in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied on) (citing In re Ludtke, 441 F.2d 660,
169 USPQ 563 (CCPA 1971), and In re Swinehart, 439 F.2d 210, 169
USPQ 226 (CCPA 1971)).
From the foregoing discussion, it is apparent that the only
limitations of claim 3 that are not satisfied by Fujimura are the
claimed videocassette housing, the supply reel, and the takeup
Appeal No. 97-1398
Application 08/295,225
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reel. The reply brief does not explain why it would have been
unobvious in view of Sasaki's audio cassette to incorporate
Fujimura's cleaning tape into a VCR cassette having supply and
takeup reels. In fact, the reply brief does not discuss Sasaki
at all, instead discussing Siddiq, which was not relied in the
new grounds of rejection. Accordingly, the rejection of claim 3
over Fujimura in view of Sasaki is affirmed, as is the rejection
of dependent claims 12, 35, and 40, which were not separately
argued with respect to the examiner's reliance on Fujimura's
check portions 11.
Independent method claim 30 requires the recording of
signals representing audio sounds and images to be played
simultaneously with cleaning. This is implied by the step of
running a length of the tape "through the VCR to clean the heads
and tape guides and simultaneously to play audio sounds and video
images." The examiner has neither contended nor explained why it
would have been obvious to actually record audio and video
information in Fujimura's cleaning portions 10, as is required to
satisfy claim 30. Consequently, the rejection of that claim is
reversed, as is the rejection of dependent claims 31 and 32,
which are not separately argued in the reply brief.
Appeal No. 97-1398
Application 08/295,225
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As for independent claim 2, the new ground of rejection
based on Fujimura in view of Sasaki fails for the same reason as
the rejection based on Sasaki in view of Siddiq: Even assuming or
the sake of argument that it would have been obvious to combine
Sasaki's cleaning leader with Fujimura's cleaning/instructional
tape, it would not have been obvious from these references to
make the leader short enough to prevent it from reaching the
magnetic head. As a result, the rejection of claim 2 is
reversed, as is the rejection of dependent claims 4-6, 11, 13,
14, 28, 38, and 41, which were also rejected as unpatentable over
these two references. The rejections of the remaining dependent
claims (i.e., claims 6-10, 17, and 39) are reversed because the
foregoing deficiency is not cured by the additional references
cited against those claims in the Answer (i.e., Nelson, Nagaoka,
and Kubota).
In summary, the rejection of claims 2-6, 11-14, 17, 28,
30-32, 35, 38, 40, and 41 as unpatentable over Sasaki in view of
Siddiq is reversed, as are the rejection of claims 7 and 8 based
on Sasaki in view of Siddiq and Nelson and the rejection of
claims 9, 10, 17, and 39 based on Sasaki in view of Siddiq,
Nagaoka, and Kubota. The rejection of claims 3, 12, 35, and 40
as unpatentable over Fujimura in view of Sasaki is affirmed. The
Appeal No. 97-1398
Application 08/295,225
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rejection of claims 2, 4-6, 11-14, 17, 28, 30-32, 35, 38, and 41
as unpatentable over Fujimura in view of Sasaki is reversed, as
are the rejection of claims 7 and 8 based on Fujimura in view of
Sasaki and Nelson and the rejection of claims 9, 10, 17, and 39
based on Fujimura in view of Sasaki, Nagaoka, and Kubota.
C. New Ground of Rejection under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claim 3 is hereby rejected
under § 102 as anticipated by Nowicki et al. (Nowicki) U.S.
Patent 3,978,520, which is described at column 1, lines 23-41 of
Siddiq and which is cited in appellants' specification (at 9) as
disclosing a suitable material for the front side recordable
abrasive material. A copy of Nowicki was submitted with
appellants' Information Disclosure Statement received March 23,
1993 (paper No. 4). Nowicki discloses "a magnetic recording tape
product having sufficient abrasivity for rapid and thorough
removal of deposits of foreign matter from the head surfaces
while at the same time providing magnetically recorded signals
capable of producing at the video monitor a high quality pattern"
(col. 2, lines 13-21). Nowicki also discloses that the tape is
installed in a cassette for insertion into a vtr (video tape
recorder) (col. 3, lines 49-52). It is well known that a tape
cassette includes supply and takeup reels. As a result, the
Appeal No. 97-1398
Application 08/295,225
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Nowicki cassette satisfies all of the limitations of claim 3. We
leave it to the examiner to determine whether any other claims
are anticipated by or obvious over Nowicki.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 97-1398
Application 08/295,225
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(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 97-1398
Application 08/295,225
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART - 37 CFR § 1.196(b)
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN C. MARTIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 97-1398
Application 08/295,225
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CHARLES D. LEVINE
3M OFFICE OF INTELLECTUAL PROPERTY COUNSEL
P.O. Box 33427
ST. PAUL, MN 55133-3427