Ex Parte Fuller

Board of Patent Appeals and Interferences

Jul 29, 2004

09872564 (B.P.A.I. Jul. 29, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MARK WESTON FULLER

Appeal No. 2004-1300
Application No. 09/872,564

ON BRIEF

Before KIMLIN, GARRIS and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
REQUEST FOR REHEARING
Appellant requests rehearing of our decision of June 16, 2004
wherein we affirmed the examiner's rejection of claim 1 under
35 U.S.C. § 102(b) over Lux.
The basis of appellant's request is that the examiner
improperly denied entry of the Declarations of Mark W. Fuller,
the present applicant. However, as noted in our decision, the
Appeal No. 2004-1300
Application No. 09/872,564
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proper recourse for appellant upon receiving notice that the
Declarations were denied entry was a petition. Certain matters,
such as an examiner's refusal to enter an amendment or
declaration after final rejection, are not within the scope of
review of this Board. It is of no moment if, as contended by
appellant, the examiner's first statement on the record denying
entry of the Declarations is in the Examiner's Answer. The fact
remains that the Board cannot consider declaration evidence that
is not entered into the record in reaching a decision, nor can
the Board direct the examiner to enter a declaration that has
been refused entry. Manifestly, we cannot grant appellant's
request to reverse the examiner's rejection of claim 1 based on
declaration evidence that is not of record. Appellant had ample
opportunity to clarify the status of the declarations after the
examiner's Advisory Action of April 3, 2003 and, furthermore,
appellant had the opportunity to petition the examiner's denial
of entry of the Declarations after such denial was clearly
articulated in the Examiner's Answer.
Accordingly, based on the foregoing, appellant's request is
denied.
Appeal No. 2004-1300
Application No. 09/872,564
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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).
DENIED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2004-1300
Application No. 09/872,564
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