Ex Parte Godwin

Board of Patent Appeals and Interferences

Aug 20, 2008

10246969 (B.P.A.I. Aug. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEBBIE ANN GODWIN
____________

Appeal 2008-1030
Application 10/246,969
Technology Center 2100
____________

Decided: August 20, 2008
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP,
And STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

REMAND TO THE EXAMINER

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 27. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2008-1030
Application 10/246,969

In the last Office action before the present appeal, the Examiner set
forth four stated art rejections, including one under 35 U.S.C. 102(e) and
three under 35 U.S.C. § 103 for various claims. The Notice of Appeal filed
on October 26, 2006, appeals the rejections of all pending claims from the
last decision of the Examiner, the final rejection. Page 1 of the present Brief
on appeal recognizes that claims 1 through 27 are finally rejected and
indicates that the rejections of these are appealed.
The top of page 4 of this Brief indicates the grounds of rejection for
which review is sought per 37 C.F.R. § 41.37(c)(1)(vi). Specifically, review
by the Board is requested of the first stated rejection, that is, of various
claims under 35 U.S.C. § 102(e) and of the first of the three stated rejections
under 35 U.S.C. § 103. Review is not sought and no separate arguments are
presented in the Brief as to the third and fourth stated rejections, those of
various other claims on appeal also rejected under 35 U.S.C. § 103. At the
same time that the Answer restates the same four rejections of the claims on
appeal as are stated in the final rejection, the Brief only argues the first two
of them. Thus, no arguments are presented to contest the two remaining
rejections encompassing claims 8, 9, 17, 18, 26, and 27 under 35 U.S.C. §
103.
In accordance with the Board’s precedential decision in Ex Parte
Ghuman, No. 2008-1175
http://www.uspto.gov/web/offices/dcom/bpai/prec.htm (BPAI May 1, 2008),
a corresponding situation was presented in this BPAI precedential opinion as
is presented here. In accordance with the discussion in Ghuman, the Manual
of Patent Examining Procedure § 1215.03 (8th ed. Rev. 6 Sept. 2007)
2
Appeal 2008-1030
Application 10/246,969

permits the Examiner to cancel claims upon the withdrawal of appeal of
those claims. The failure to pursue arguments as to these claims is
considered to be a withdrawal of these claims and operates as an
authorization to cancel those claims in accordance with this MPEP
provision.
Therefore, consistent with Ex parte Ghuman and the principles of the
noted MPEP section, when an Appellant no longer wishes to pursue in the
appeal Brief rejected claims which were appealed in the Notice of Appeal,
the Appellant should file an amendment canceling any claims which the
Appellant no longer wishes to appeal. Therefore, this application is
remanded to the Examiner so that the Examiner may enter a paper canceling
claims 8, 9, 17, 18, 26, and 27.
Upon entry of the paper and cancellation of the claims, this
application should be returned to the Board for consideration of the appeal
on the merits as to the remaining claims, claims 1 through 7, 10 through 16,
and 19 through 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REMANDED

pgc

IBM CORPORATION (RHF)
C/O ROBERT H. FRANTZ
P. O. BOX 23324
OKLAHOMA CITY, OK 73123
3