Ex Parte Gammon

Board of Patent Appeals and Interferences

Jun 13, 2008

10783812 (B.P.A.I. Jun. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BARRY GAMMON
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Appeal 2008-1420
Application 10/783,812
Technology Center 3700
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Decided: June 13, 2008
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Before HUBERT C. LORIN, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
Gammon (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). This appeal includes a record that is not ripe for review and
pursuant to 37 C.F.R. § 41.50(a)(1) (2007), we remand this application to the
Appeal 2008-1420
Application 10/783,812

2
Examiner to take appropriate action consistent with our comments below.
37 C.F.R. §§ 41.35(b) and 41.50(a)(1) (2007).
The record is not ripe for review for the following reason.
The Appellant, in the Appeal Brief filed on September 15, 2006, did
not respond to the Examiner’s position in the Final rejection mailed on July
21, 2005, see page 6, that the declaration was insufficient to overcome the
35 U.S.C. § 102(b) rejection, for which it was submitted. The Appellant,
nevertheless, see Appeal Brief at page 8, makes a cursory cite to that same
declaration during the discussion of the 35 U.S.C. § 102(b) rejection. The
Examiner, in the Answer, should have, but did not, then explicitly address
this cursory cite to the declaration. In order to make the record clear, the
Examiner should clarify whether he maintains the position he took in the
Final rejection that the declaration is insufficient to overcome the 35 U.S.C.
§ 102(b) rejection.

ORDER
Accordingly, it is ORDERED that the application is remanded to the
Examiner:
1) for the Examiner to clarify the Examiner’s position regarding
the declaration submitted by the Appellant as Appendix B to the Appeal
Brief.
2) for such further action as may be appropriate.
Appeal 2008-1420
Application 10/783,812

3
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) 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.

REMANDED

hh

CHRIS A. CASEIRO
VERRILL DANA, LLP
ONE PORTLAND SQUARE
PORTLAND, ME 04112-0586