Ex Parte Fish et al

Board of Patent Appeals and Interferences

Jun 12, 2008

10015533 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW J. FISH and MICHAEL D. KINNEY
____________

Appeal 2007-3697
Application 10/015,533
Technology Center 2100
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Decided: June 12, 2008
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Before LANCE LEONARD BARRY, JAY P. LUCAS, and CAROLYN D.
THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

ORDER REQUIRING APPELLANTS TO BRIEF AN
ADDITIONAL MATTER

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2007-3697
Application 10/015,533

II. LAW
In an ex parte appeal, the Board of Patent Appeals and Interferences
"is basically a board of review — we review . . . rejections made by patent
examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
"[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board. These formal
matters should not be combined in appeals to the Board." MPEP § 706.01
(8th ed., Rev. 5 Aug. 2006).1

Furthermore, an appeal "brief shall contain . . . a copy of the claims
involved in the appeal." 37 C.F.R. § 41.37(c)(1)(viii) (2006) .2 It "shall not
include any new or non-admitted amendment . . . ." Id § 41.37(c)(2).

III. ANALYSIS
Here, the Appellants submitted a "Response After Final . . . on
June 30, 2006." (Br. 2.) They admit, "Amendments submitted in that
Response were not entered . . . ." (Id.) In their Appeal Brief, however,
"[t]he submitted amendments are attached in Section XI. UN-ENTERED
AMENDMENTS" (id.), and the Appellants "traverse this decision and
request that the claims be amended, as in section XI. UN-ENTERED

1 We cite to the version of the Manual of Patent Examiner Procedure in
effect at the time of the Appeal Brief. The current version includes the same
rules.
2 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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Appeal 2007-3697
Application 10/015,533

AMENDMENTS, and that the arguments be considered in light of these
amendments . . . ." (Id. 8.)

The Board lacks authority to review the Examiner's decision to deny
entry of the amendments and to direct him to enter the amendments. The
Appellants' request to overturn the Examiner's denial should not be included
in this appeal.

The non-admitted amendments also should not be included in the
Appeal Brief. Inclusion of arguments directed to limitations contained in the
non-admitted amendment is confusing, moreover, as well as improper.

Furthermore, the arguments in the "Claims 1-3, 5-8 and 17-19 are
patentable over Harmer in view of EFIS" section of the Appeal Brief jump
back and forth between claim 1 to claim 7. More specifically, the arguments
begin by addressing "[i]ndependent claim 1" (id. 5) and logically proceed to
"independent claim 7." (Id. 7.) The arguments then jump back to "claim 1."
(Id. 8) Afterward, they jump forward to "claim 7." (Id.) Such back-and-
forth treatment of claims is difficult to follow.

IV. ORDER
"We decline to substitute our speculation for the greater certainty that
should come from the Appellants." Ex Parte Dietz, No. 2007-2386,
2008 WL 696147, at *2 (BPAI 2008). Instead, they must file an Amended
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Appeal 2007-3697
Application 10/015,533

Appeal Brief that corrects the aforementioned defects. More specifically,
the Amended Appeal Brief should omit the following items:
• any request to overturn the Examiner's decision to deny entry of any
amendments or to direct him to enter any amendments.

• any copy of any non-admitted amendments.

• any arguments directed to limitations contained in any non-admitted
amendments.

Furthermore, the Amended Brief should address the claims seriatim, without
jumping back-and-forth. For example, all arguments for claim 1 should be
presented before those for claim 7.

No new arguments may be added to the Amended Brief. Nor may any
of the arguments in the original Appeal Brief be amplified. The Amended
Brief submitted must be self-contained with respect to all arguments. "No
prior briefs should be referenced or incorporated therein. Furthermore, any
additional Answer submitted by the Examiner should be self-contained with
respect to all rejections and arguments; no prior Answer or Office action
should be referenced or incorporated therein." Dietz, at *2.

Under 37 C.F.R. § 41.50(d), we give the Appellants a non-extendable
time period of thirty days within which to respond to this order. Failure to
comply with the order within that time may result in the sua sponte dismissal
of their appeal.

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Appeal 2007-3697
Application 10/015,533

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDERED; 37 C.F.R. § 41.50(d)

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