Ex Parte Goda et al

Board of Patent Appeals and Interferences

Aug 19, 2008

09980880 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIO GODA, NORIO SUZUKI, and
KIYOSHI YAMASHITA
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Appeal 2008-3281
Application 09/980,880
Technology Center 1700
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Decided: August 19, 2008
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Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PAK, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This case is not ripe for review and is, therefore, remanded to the
Examiner for appropriate action. 37 C.F.R. § 41.50(a)(1); see also Manual
of Patent Examining Procedure (MPEP) § 1208 (Eighth ed., Rev. 5, August
2006). Specifically, this case is remanded to the Examiner to comply with
37 C.F.R. §41.41(a)(2)-(b) regarding the Reply Brief and 37 C.F.R. §
Appeal 2008-3281
Application 09/980,880

41.37(c)(1) and (c)(1)(viii) regarding the Appeal Brief, and to clarify the
status of the amendment filed with the Reply Brief as instructed below.

I. Reply Brief and Amendment
37 C.F.R. §41.41(a)(2)-(b) states:
(2) A reply brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence.
See § 1.116 of this title for amendments, affidavits or other evidence
filed after final action but before or on the same date of filing an
appeal and § 41.33 for amendments, affidavits or other evidence filed
after the date of filing the appeal.
(b) A reply brief that is not in compliance with paragraph (a) of this
section will not be considered. Appellant will be notified if a reply
brief is not in compliance with paragraph (a) of this section.

(emphasis added).
On 17 May 2007, the Office received a Reply Brief accompanied by
an amendment cancelling claims 3 and 4 made after the final rejection. of
record. According to the Manual of Patent Examining Procedure (MPEP) §
1208, "[i]f a [R]eply [B]rief is not in compliance with 37 CFR [§] 41.41, the
examiner must notify [A]ppellant[s] that the [R]eply [B]rief has not been
considered and the reason for non-compliance." Rather than notifying
Appellants of this non-compliance, the Examiner mailed an Office Action on
6 August 2007, acknowledging that the "[R]eply [Br]ief filed 5/17/07 has
been entered and considered. The application has been forwarded to the
Board of Patent Appeals and Interferences for decision on the appeal." This
Office Action did not indicate the status of the amendment filed with the
Reply Brief.

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Appeal 2008-3281
Application 09/980,880

II. The "Appendix of Claims" section of the Appeal Brief
37 C.F.R. § 41.37(c)(1) and (c)(1)(viii) in relevant part states "[t]he
Brief shall contain. . . An appendix containing a copy of the claims involved
in the appeal."
On 24 November 2006, the Office received an Appeal Brief filed by
Appellants. On page 2 of the Appeal Brief under the heading "STATUS OF
AMENDMENTS", Appellants stated, "the pending claims are in the form
submitted by Appellants in the response of June 20, 2005." However, the
claims included in the Appeal Brief do not correspond to the actual pending
claims. Instead, they appear to reflect the claims in one of the after final
amendments received by the Office on December 5, 2005, which was
refused entry by the Examiner on December 14, 2005. Consequently, the
Appeal Brief is not in compliance with the requirements of 37 C.F.R. §
41.37(c)(1) and (c)(1)(viii).

ORDER
For the foregoing reasons, we remand this application to the
jurisdiction of the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) to:
(1) Send a notice of non-compliant Appeal Brief and Reply Brief
for failure to comply with 37 C.F.R. §41.41(a)(2)-(b) and 37 C.F.R. §
41.37(c)(1) and (c)(1)(viii), respectively to provide Appellants an
opportunity to correct the above-identified deficiencies in the Appeal and
Reply Briefs; and
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Appeal 2008-3281
Application 09/980,880

(2) Clarify the status of the after final amendment accompanying the
Reply Brief in this record (notify Appellants of the status of this
amendment).
Because this application is being remanded for further action, the
application is a "special" application.” MPEP § 708.01(D). The Board
should be informed of any action affecting the status of the appeal (e.g.,
abandonment, issue, reopening prosecution).
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 after receiving the Appeal Brief and
Reply Brief which comply with the above-identified Rules.
REMANDED

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