Ex Parte Gnade et al

Board of Patent Appeals and Interferences

Mar 30, 2006

10051970 (B.P.A.I. Mar. 30, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE A. GNADE and ROBERT M. WALLACE
____________

Appeal No. 2006-0502
Application No. 10/051,970
____________

ON BRIEF
____________

Before WARREN, WALTZ and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

REMAND TO THE EXAMINER
On consideration of the record, we determine that the above-
identified application is not ready for a decision on appeal
under 35 U.S.C. § 134 (2003). Accordingly, we remand this
application to the examiner for further consideration and action
not inconsistent with our opinion below. 37 CFR
§ 41.50(a)(1) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)).

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At page 3 of the answer, the examiner maintains that:

claims 11-60 stand or fall together because appellant’s
brief does not include a statement that this grouping
of claims does not stand or fall together and reasons
in support thereof. See 37 CFR 1.192(c)(7).

However, at the time of filing of appellants’ brief (May 11,
2005), 37 CFR § 1.192(c) was no longer in effect, having been
replaced by 37 CFR § 41.37 (effective September 13, 2004, 69 Fed.
Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). In this regard, new rule 37 CFR § 41.37
(c)(vii) provides, in part, that:
For each ground of rejection applying to two or more
claims, the claims may be argued separately or as a
group. When multiple claims subject to the same ground
of rejection are argued as a group by appellant, the
Board may select a single claim from the group of
claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims
which appellant has grouped together shall constitute a
waiver of any argument that the Board must consider the
patentability of any grouped claim separately. Any
claim argued separately should be placed under a
subheading identifying the claim by number. Claims
argued as a group should be placed under a subheading
identifying the claims by number. A statement which
merely points out what a claim recites will not be
considered an argument for separate patentability of
the claim.

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Here, we observe that the examiner maintains three separate
grounds of rejection in the answer with each ground of rejection
being applied to different groupings of claims. Also, appellants
have addressed each separate ground of rejection under separate
headings in the brief. Thus, the examiner’s statement that all
of the appealed claims stand or fall together is in error not
only because the examiner applied the incorrect rule, but as a
result of the necessity to address the claims subject to each
ground of rejection, which pertain to different sets of claims,
separately, as was the case even under the replaced rule, 37 CFR
§ 1.192(c)(7). See In re McDaniel, 293 F.3d 1379, 1383-84, 63
USPQ2d 1462, 1465-66 (Fed. Cir. 2002), wherein our reviewing
court, stated:
37 C.F.R. §1.192(c)(7) does not give the Board carte
blanche to ignore the distinctions between separate grounds
of rejection and to select the broadest claim rejected on
one ground as a representative of a separate group of claims
subject to a different ground of rejection. The applicant
has the right to have each of the grounds of rejection
relied on by the Examiner reviewed independently by the
Board under 35 U.S.C. §6(b) (providing that “[t]he Board of
Patent Appeals and Interferences shall ... review adverse
decisions of examiners upon applications for patents”)
(emphasis added). Simplification and expedition of appeals
cannot justify the Board's conflating separately stated
grounds of rejection by selecting, for the purpose of
deciding an appeal as to one ground of rejection, a
representative claim which is not itself subject to that
ground of rejection. 37 C.F.R. §1.192(c)(7) does not
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override an applicant's right under the statute to have each
contested ground of rejection by an examiner reviewed and
measured against the scope of at least one claim within the
group of claims subject to that ground of rejection. See
35 U.S.C. §6(b) (2000).

Aside from that error, the examiner has not separately
addressed at least all of the claims that are argued separately
with respect to each of the separate grounds of rejection. For
example, appellants present separate arguments for three
groupings of claims for each of the examiner’s separate
anticipation grounds of rejection at pages 6-8 of the brief, yet
the examiner does not correspondingly address claims from each of
those multiple claim groupings as argued for each separate
anticipation rejection. Indeed, for the secondly presented
anticipation rejection set forth at page 6 of the answer, the
examiner generally refers us to the abstract, Introduction,
Discussion and Conclusion of the reference article being applied
in that rejection. Then, the examiner refers us to the reasoning
of the first stated anticipation rejection involving a different
reference for explaining the application of the second reference
in the second anticipation rejection. That is hardly a detailed
application of the particular teachings of the second reference

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to each of the rejected claims identified in the examiner’s
second anticipation rejection.1
In addition, the examiner refers to material obtained from a
website at page 8 of the answer without identifying the date of
public availability thereof. In this regard, we remind the
examiner that any references relied upon should be identified in
the statement of the rejection. Moreover, we note that the issue
as to the scope of the claim terms “chemical toxin” and
“biological toxin” should not be addressed by merely referencing
a web site definition of applied references’ terms. Rather, the
examiner should be determining the scope of the contested claim
terms by taking into account the usage of those claim terms in
the claims themselves, when read as a whole, taking into account
how those same terms are used in appellants’ specification, as
they would be understood by one of ordinary skill in the art.
Also, any specific definitions of those terms, if furnished in

1 As an additional matter, we note that the examiner erroneously includes
cancelled claims 2, 3, 7 and 8 in the obviousness rejection set forth at pages 6 and 7 of
the answer.
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appellants’ specification, should be given primacy in determining
the meaning thereof in determining the broadest reasonable scope

of the claimed subject matter consistent with current patent
jurisprudence.
In light of the above, this application is not in condition
for a decision on appeal at this time. On return of this
application, the examiner should take appropriate action to
correct the deficiencies identified above.
This remand to the examiner pursuant to 37 CFR
§ 41.50(a)(1) is made for further consideration of a rejection.
Accordingly, 37 CFR § 41.50(a)(2) applies if a supplemental
examiner’s answer is written in response to this remand by the
Board.

Additionally, this application, by virtue of its “special”
status, requires an immediate action. See MPEP § 708.01(D)(8th
ed., Rev. 2, May 2004). Thus, it is important that the Board be
promptly informed of any action affecting the appeal in this
case.
REMANDED

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CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )

PFK/rwk
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Application No. 10/051,970

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