Ex Parte Guo et al

Board of Patent Appeals and Interferences

Apr 30, 2007

09934878 (B.P.A.I. Apr. 30, 2007)

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for publication and is not binding precedent of the Board.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 SHAO-HUA GUO, WEI WANG,
and DANIEL B. POURREAU
____________

Appeal 2007-0381
Application 09/934,878
Technology Center 1600
____________

Decided: April 30, 2007
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
We remand the application to the jurisdiction of the Examiner and
involved Technology Center for consideration of the Response to
Supplemental Answer filed February 17, 2006. 37 C.F.R. §§ 41.35(b) and
41.50(a)(1) (2006).
A review of this Response (Reply) reveals that although the Board of
Patent Appeals & Interferences (Board) is referred to in the remarks, the
Appeal 2007-0381
Application 09/934,878

substance of the remarks is seemingly directed to seeking reconsideration of
the Examiner’s decision not to enter Appellants’ submission of excerpts
from Principles of Polymerization by George Odium (Exhibit). The Reply
does not present additional arguments addressing the merits of the
Examiner’s obviousness rejection. Rather, it is argued in the Reply that the
Exhibit was submitted with an Amendment on September 25, 2003 and that
the record reflects that the amendment (which allegedly included the
Exhibit) was entered and considered by the Examiner. (See Reply 2 and
Supplemental Examiner’s Answer 6). Thus, the Reply is seemingly
presenting a petitionable question that is not within the jurisdiction of this
panel of the Board to resolve.
In particular, we note that the Supplemental Examiner’s Answer
informs Appellants of the non-entry status of the Exhibit without otherwise
seeming to change the Examiner’s position on appeal in the original Answer.
Compare the Supplemental Examiner’s Answer to the original Examiner’s
Answer in their entirety. Appellants’ Reply to the Supplemental Examiner’s
Answer appears to be a Request for Reconsideration respecting the non-
entry determination. In this regard, we observe that the possibility of a
Supplemental Examiner’s Answer, as referred to in the Panel Remand dated
January 19, 2005, should have been reasonably understood by Appellants
and the Examiner as being directed to the case where the Examiner may
have determined that the Exhibit, in question, was entered and consideration
thereof was required. In such a case, the Examiner was being advised to
address such evidence and arguments pertaining thereto in a Supplemental
Answer if the Exhibit was entered, found unpersuasive, and the rejections
were being maintained. Of course, if the evidence had been entered and
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Appeal 2007-0381
Application 09/934,878

considered by the Examiner in the Supplemental Examiner’s Answer,
Appellants would have been required to either request reopening of
prosecution before the Examiner or file a Reply Brief to continue on Appeal.
In the instant case where the evidence currently remains non-entered,
the Supplemental Answer appears to be a mislabeled Advisory Action
informing Appellants of the entry status of the Exhibit without otherwise
changing the preceding Answer (Supplemental Examiner’s Answer 6).
Appellants’ Reply thereto appears to be a request for reconsideration of the
non-entry determination.
We return this application to the jurisdiction of the involved
Technology Center and the Examiner in order for the appropriate Office
Official(s) to consider and prepare an appropriate response to the Reply
filed February17, 2006, and to otherwise clarify the record as may be
necessary in light of the Supplemental Examiner’s Answer, the Reply
thereto, and the above.
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Appeal 2007-0381
Application 09/934,878

This Remand is not for further consideration of a rejection unless the
decision respecting the non-entry of the Exhibit allegedly accompanying an
earlier filed amendment is changed; that is, the Exhibit is entered. If such a
changed position as to the entry of the Exhibit is the ultimate outcome of this
Remand; then, 37 C.F.R. § 41.50(a)(2) would apply. This is so because, in
the latter case, the Examiner may submit another Supplemental Examiner’s
Answer maintaining the rejections and addressing the so entered Exhibit,
Hence, a Reply Brief from Appellants would be required under such
circumstances. 37 C.F.R. § 41.50(a)(2) (2006).

REMANDED

sld

LYONDELL CHEMICAL COMPANY
3801 WEST CHESTER PIKE
NEWTOWN SQUARE, PA 19073

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