10442243 (P.T.A.B. Oct. 31, 2012)

Ex Parte Fiedrich

Patent Trial and Appeal BoardOct 31, 2012

10442243 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOACHIM FIEDRICH ____________________ Appeal 2010-009842 Application 10/442,243 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, JAMES P. CALVE, and MITCHELL G. WEATHERLY, Administrative Patent Judges. WEATHERLY, Administrative Patent Judge. ORDER DISMISSING APPEAL Appeal 2010-009842 Application 10/442,243 2 Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 25-36, 38-52, and 55-58.1 App. Br. 2. Claims 1-24, 37, 53, and 54 have been cancelled. Id. The rejections originally presented for appeal covered claims 25-36, 38-52, and 55-58. Final Action, mailed Nov. 20, 2006, at 2-3. In response to the Appeal Brief filed on November 5, 2007, the Examiner mailed the Examiner’s Answer on April 5, 2010, in which the Examiner withdrew the rejection of claims 34, 40, 42, 43, 45, 46, 50, 52, and 55-58 as being unpatentable over Alsberg and Prokasky and entered new grounds of rejection for claims 25-36, 38-52, and 55-58 (the “New Grounds”). Ans. 3- 4. After stating the New Grounds with respect to claims 25-36, 38-52, and 55-58, the Examiner advised that: [A]ppellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection: (1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. (2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. 1 The Examiner rejected claims 24-32, 34, 36, 38, 39-50, 52, and 55- 58 under 35 U.S.C. § 103(a) as unpatentable over Alsberg (US 5,788,152; iss. Aug. 4, 1998) and Prokasky (US 5,491,942; iss. Feb. 20, 1996); and claims 33, 35, and 51 under 35 U.S.C. § 103(a) as unpatentable over Alsberg, Prokasky, and Fiedrich (US 5,579,996; iss. Dec. 3, 1996). Final Action, mailed Nov. 20, 2006, at 2-3. Appeal 2010-009842 Application 10/442,243 3 Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1)(vii) and should be in compliance with the other requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1). Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings. Ans. 27-28 (quoting 37 C.F.R. § 41.39(b) and (c)). There is no evidence in the record before us that Appellant has either requested that prosecution be reopened or filed a Reply Brief responsive to the New Grounds. Furthermore, the New Grounds run to all claims on appeal.2 Accordingly, by operation of 37 C.F.R. § 41.39(b), the appeal is sua sponte DISMISSED. ORDER It is hereby ORDERED that the Appeal in the above-noted Application stands DISMISSED. Upon return of the Application to the Examiner, the Examiner should (1) cancel claims 25-36, 38-52, and 55-58 2 The Examiner expressly withdrew the originally appealed rejections of claims 34, 40, 42, 43, 45, 46, 50, 52, and 55-58. Ans. 3. Therefore, the Examiner’s originally appealed rejections of claims 25-33, 35, 36, 38, 39, 41, 44, 47-49, and 51 remain before us. Ans. 5-6. However, because claims 25-36, 38-52, and 55-58 are subject to cancellation (MPEP § 1207.03), the original rejections of claims 25-33, 35, 36, 38, 39, 41, 44, 47-49, and 51 under 35 U.S.C. § 103(a) are moot, and we do not address them in this appeal. Appeal 2010-009842 Application 10/442,243 4 and (2) notify the Appellant that the appeal as to claims 25-36, 38-52, and 55-58 is dismissed and those claims are canceled. See MPEP § 1207.03 V.C., § 1215.04. DISMISSED mls