Ex Parte Emery

Board of Patent Appeals and Interferences

May 23, 2008

10608718 (B.P.A.I. May. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. EMERY
____________

Appeal 2008-0778
Application 10/608,718
Technology Center 2800
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Decided: May 23, 2008
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Before CHARLES F. WARREN, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(2007) 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.

Appeal 2008-0778
Application 10/608,718

The appeal is not ripe for review as a result of inconsistencies or
incompleteness in the appeal record as to the rejections before us, the
evidence relied upon, and the status of claim amendments presented.
In this regard, the Non-Final Office Action of May 31, 2006 from
which this appeal is taken includes, inter alia, (1) a rejection of appealed
claims 1 and 6 under 35 U.S.C. § 102(b) over Horvath (U.S. Patent No.
4,415,025); (2) a rejection of appealed claims 1, 4, and 6 under 35 U.S.C. §
102(b) over Lee et al. (U.S. Patent No. 6.081,037); (3) a rejection of
appealed claims 1 and 6 under 35 U.S.C. § 102(e) over Turner (U.S. Patent
Appl. Pub. No. 2002/0185728); and (4) a rejection of appealed claims 3 and
7-10 under 35 U.S.C. § 103(a) over Horvath, Lee et al. or Turner, each taken
in view of Zhang et al. (U.S. Patent Appl. Pub. No. 2002/0171144) (Off.
Act. 2-5).
However, in the Examiner’s Answer, the Examiner does not list
Turner as evidence being relied upon and does not present Rejection (3)
above. Nevertheless, the Examiner inconsistently presents a rejoinder to
Appellants’ arguments respecting Rejection (3) in the Examiner’s Answer
(Ans. 8-9). Also, Rejection (4) is presented without Turner being listed as
part of the evidence used in rejecting the appealed claims identified in that
rejection. Yet, the Examiner indicates agreement with Appellant’s listing of
the grounds of rejection to be reviewed on appeal as set forth in the Appeal
Brief, which listing includes Turner as part of the evidence relied upon by
the Examiner in Rejection (4) (Ans. 2; Br. 8). On this record, we decline to
speculate as to the references and rejections that are maintained by the
Examiner.

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Appeal 2008-0778
Application 10/608,718

Also, an Amendment to claims 4 and 31 was filed on November 3,
2006, after the Notice of Appeal was filed. This amendment is mentioned in
the “Statement of Amendments” section of the Appeal Brief (5). The
Examiner, however, does not explicitly identify the entry status of the
amendment in the Answer or in another Paper filed in response thereto.
Consequently, the appeal record requires clarification with regard to
the entry status of the claim amendments presented, the grounds of rejection
maintained by the Examiner, and the references being relied upon.
In light of the foregoing, we remand this application to the Examiner
to identify all of the references being relied on in rejecting the appealed
claims, as well as, identifying and reproducing the statements of
rejection being relied upon. In so doing, the Examiner must clarify the
application file record to consistently and unambiguously specify which
references are being applied in the rejection of each of the appealed claims
with regard to any rejections that are maintained in responding to this
remand. References not being relied upon in rejecting a claim should not be
discussed in explaining the rejection of that claim. Moreover, the entry
status of the Amendment filed November 03, 2006 should be clarified.

ORDER

We remand this appealed application to the jurisdiction of the
Examiner for action not inconsistent with our comments made above.
37 C.F.R. § 41.50(a)(2) applies if a supplemental examiner’s answer
is written in response to this Remand.
This application requires immediate action by the Examiner. The
Board of Patent Appeals and Interferences should be informed promptly of
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Appeal 2008-0778
Application 10/608,718

any action affecting the appeal in this case, including reopening of
prosecution, allowance and/or abandonment of the application.

REMANDED

tc

BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040

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