Ex Parte Hein et al

Board of Patent Appeals and Interferences

Nov 8, 2006

09693652 (B.P.A.I. Nov. 8, 2006)

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for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte Jerrell P. Hein and Marius Goldenberg
___________

Appeal No. 2006-3133
Application No. 09/693,652
Technology Center 2600
___________

ON BRIEF
___________

Before HAIRSTON, DIXON, and HOMERE, Administrative Patent
Judges.
DIXON, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

This is an order remanding this application for the Examiner’s
consideration of the After Final Amendment filed on March 14, 2005, and
clarification of the status of claims.
Application 09/693,652

Accordingly, the application is herewith being returned to the
examiner. The matters requiring attention prior to docketing are identified
below.

The Examiner indicated on page 2 of the Examiner’s answer mailed
on December 21, 2005, that the after final amendment has been entered, but
we find no paper indicating this entry to Appellants in the IFW or in the
PALM contents for this application.

Furthermore, the after final amendment only requested cancellation of
claims 17 and 18 yet the Examiner has indicated that claims 17-20 are
withdrawn from consideration at page 2 of both the original Examiner’s
answer mailed June 3, 2005, and the supplemental Examiner’s answer
mailed December 21, 2005. The Examiner then continued to state a
rejection of independent claim 19 and dependent claim 20 in both of the
answers.

Application 09/693,652

Therefore, the Examiner should clearly address the merits of the after
final amendment dated March 14, 2005, and mail a communication to
Appellants. The Examiner should require Appellants to correct the claims
appendix to the Appeal brief, if the amendment is entered. The Examiner
should further clearly indicate whether claims 19 and 20 are rejected or
withdrawn from consideration and state the reasons for the withdrawal.

Accordingly, it is

ORDERED that the application is returned to the examiner to:

(1) address the merits of the after final amendment dated March 14,
2005, and mail a communication to Appellants. The Examiner should
require Appellants to correct the claims appendix to the Appeal brief, if the
amendment is entered.

Application 09/693,652

(2) vacate the Examiner's Answer mailed on December 21, 2005, and
issue a revised Examiner's Answer in compliance with the new rules
effective September 13, 2004, clarifying the status of the claims; and

(3) for such further action as may be appropriate.

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

JLD/pgc

Application 09/693,652

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