Ex Parte Garrettson

Board of Patent Appeals and Interferences

Aug 27, 2009

10445674 (B.P.A.I. Aug. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BROOK GARRETTSON
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Appeal 2009-005806
Application 10/445,674
Technology Center 1700
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Decided: August 28, 2009
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
The appeal is not ripe for our consideration at this time. Accordingly,
we remand the above-identified application to the jurisdiction of the
Technology Center involved in order for the Examiner to take appropriate
action consistent with our comments below.

Appeal 2009-005806
Application 10/445,674

PROCEDURAL BACKGROUND
On February 02, 2007, the Examiner issued a Final Office Action
(FOA) finally rejecting claims 1-4, 6-9, and 15 under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent No. 4,031,059 to Strauss (Strauss) and
finally rejecting claims 5, 10-12, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Strauss in view of U.S. Patent No. 6,451,374 to Watchko
(Watchko) (FOA, 2-5, 8-10).
On July 05, 2007, Appellant ostensibly perfected their appeal from the
decision of the Examiner of February 02, 2007 finally rejecting claims 1-12,
14 and 15, by submitting an Appeal Brief appealing the aforementioned
decision of the Examiner (App. Br. 1 and 6).
On September 06, 2007, the Examiner issued an Examiner’s Answer
in response to the above-noted Appeal Brief. In this Answer, the Examiner
maintained the § 102 rejection over Strauss as to claims 1-4, 6, and 15 only
and the § 103 rejection of claims 5, 10-12, and 14 over Strauss in view of
Watchko (Ans. 2- 6, 8-10). In the Answer, the Examiner presented a new
ground of rejection against claims 7-9 under 35 U.S.C. § 103(a) as being
unpatentable over Strauss (id. at 2 and 6-8). The Examiner withdrew the
§ 102 rejection as to claims 7-9 as being anticipated by Strauss, as evidenced
by the lack of presentation thereof in the Examiner’s Answer (see generally
Ans). The Answer includes notification to Appellant of the options for
responding to the new ground of rejection as well as authorization of the
new ground of rejection by the T.C. Director designee (id. at 15-16).
On November 08, 2007, Appellant filed a Reply Brief which includes
arguments against the new ground of rejection (Reply Br. unnumbered pages
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Appeal 2009-005806
Application 10/445,674

6-8). This is one of the permissible options listed by the Examiner in the
Answer for responding to the new ground of rejection.
On February 04, 2008, the Examiner issued a communication to
Appellant which states:
The reply brief filed November 08 2007 has been
entered and considered. The application has been
forwarded to the Board of Patent Appeals and
Interferences for decision on the appeal.

DISCUSSION

The Examiner’s response to Appellant’s Reply Brief is inadequate
because the Examiner does not expressly state that the new ground of
rejection has been maintained and even assuming that the new ground of
rejection has been maintained, the record before us contains no response by
the Examiner to Appellant’s arguments against this new ground of rejection.
As a result, the record for this appeal lacks explanation by the Examiner as
to why Appellant’s arguments against the new rejection are considered to be
unpersuasive by the Examiner.
Given the above, the appeal record is incomplete in that we have no
answer from the Examiner responding to Appellant’s arguments as to the
new ground of rejection. Consequently, the appeal record is not in condition
for processing this appeal with respect to the new ground of rejection set
forth in the Examiner’s Answer.

ORDER
The Examiner must respond to this remand by issuing a Supplemental
Examiner’s Answer in response to the Reply Brief filed November 08, 2007.
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Appeal 2009-005806
Application 10/445,674

The Supplemental Answer must either expressly withdraw the new rejection
or rebut each of Appellant’s arguments against the new rejection by
explaining why these arguments are unpersuasive. See the Manual of
Patenting Examining Procedure (MPEP) § 1207.05 at II and § 1208 at II
(8th ed., Rev. 7, Jul. 2008).
This remand to the Examiner is for further consideration of a pending
rejection under 37 C.F.R. § 41.50(a)(1).

REMANDED

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