Ex Parte Eck et al

Board of Patent Appeals and Interferences

Jun 16, 2006

10275859 (B.P.A.I. Jun. 16, 2006)

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is not binding precedent of the Board.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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND ECK, DIETER BAUMANN,
JORG HEILEK and KLAUS JOACHIM
____________

Appeal No. 2006-1023
Application No. 10/275, 859
____________

ON BRIEF1
____________

Before KRATZ, TIMM and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

REMAND TO THE EXAMINER

This case is not ripe for meaningful review and is therefore,
remanded to the Examiner for appropriate action consistent with the
views expressed below.

1 The hearing for this application scheduled for May 9, 2005, has been postponed because
Appeal No. 2006-1023
Application No. 10/275,859

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On page 6 of the Answer dated August 8, 2005, the Examiner rejects the
subject matter of claim 6 under the judicially created doctrine of obviousness-
type double patenting as unpatentable over claims 1-12 of Application No.
10/181,919 (‘919 application).2, 3 On July 26, 2002, an amendment was filed in
the ‘919 application, canceling claims 1-12. On February 8, 2005, Application
No. 10/181,919 issued as US Patent 6,852,881. The Examiner has failed to indicate
that the double patenting rejection was applicable to the claims that remained
in the ‘919 application after the July 26, 2002 amendment or that the rejection
was applicable to the claims of the issued patent. Thus, the basis of the
rejection of the subject matter of claim 6 under double patenting is unclear.
We also note that in the remaining obviousness-type double patenting
rejections presented in Answer that the Examiner has failed to detail the
specifics of these rejections.
The Board is required by the Federal Circuit to analyze the claims on a
limitation-by-limitation basis, with specific fact finding for each contested
limitation and satisfactory explanations for such findings. Gechter v.
Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1033 (Fed. Cir. 1997). The

the issues are not ripe for review.
2 The Examiner’s reasoning for the rejection appears in the Final Rejection mailed April 19,
2005.
3 The Appellants in the Brief, filed May 27, 2005, and the Reply Brief, filed September 26, 2005,
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Application No. 10/275,859

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Examiner must meet an equivalent standard, because the Board of Patent
Appeals and Interferences is a board of review and not a vehicle for initial
examination. See 35 U.S.C. § 6(b)(2000).
Further, the Examiner should provide a discussion of the arguments
presented by Appellants in the Briefs to the extent that the arguments remain
applicable. In light of the above facts, we feel it is premature to decide this
appeal. The Appellants should be given an opportunity to respond on the
record. Particularly, the Examiner is required to point out on a limitation by
limitation basis which claims of the cited references correspond to the
limitations recited in the rejected claim. It is important that ambiguous or
obscure bases for decision do not stand as barriers to a determination of
patentability.

provides arguments regarding the obviousness-type double patenting of claim 6 over claims
1-12 of Application No. 10/181,919. (Brief, pp. 9-10; Reply Brief, pp. 3-4).
Appeal No. 2006-1023
Application No. 10/275,859

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This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) (2004) 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.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR ' 1.136(a)(1)(iv)( 2004).

REMANDED

PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS/sld

Appeal No. 2006-1023
Application No. 10/275,859

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OBLON, SPIVAK, MCCELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314