10495434 (B.P.A.I. Jun. 29, 2010)

Ex Parte Hirano

Board of Patent Appeals and InterferencesJun 29, 2010

10495434 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte FUJIO HIRANO ______________ Appeal 2010-001208 Application 10/495,434 Technology Center 1700 _______________ Decided: June 29, 2010 _______________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. ORDER DISMISSING APPEAL Applicant appeals to the Board from the decision of the Primary Examiner finally rejecting claims 1-12 in the Office Action mailed August 11, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005). The Examiner finally rejected claims 1, 4-6, 8-10, and 12 under 35 U.S.C. § 102(b) as anticipated by SHIMIZU (hereinafter “TATSUO” for Appeal 2010-001208 Application 10/495,434 - 2 - consistency with the appeal record; Japanese Patent Publication No. 09- 086188); claims 1, 2, 4-7, and 9-12 under 35 U.S.C. § 102(b) as anticipated by HORIUCHI (hereinafter “TATSUTO” for consistency with the appeal record; Japanese Patent Publication No. 2000-223096); claims 1, 4, 6, 9-12 as anticipated by GOTO (hereinafter “KENSUKE” for consistency with the appeal record; JP Publication 2001-155789);1 claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of either the TATSUO or TATSUTO reference and JAMES (U.S. Patent 5,766,789); and claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of either the TATSUO or TATSUTO reference and INOUE (U.S. Patent 5,856,041) (Final Rejection 3-12). The record shows that a prior merits panel entered a Remand To the Examiner in this Application requiring the Examiner to obtain an authoritative translation of TATSUO (Japanese Patent Publication No. 09- 086188), TATSUTO (Japanese Patent Publication No. 2000-223096), and KENSUKE (JP Publication 2001-155789). Rem. 2. The Remand required that if the Examiner submitted a Supplemental Answer in response to the Remand, Appellant must comply with 37 C.F.R. § 41.50(a)(2) (2007), which states that “appellant must within two months from the date of the supplemental examiner’s answer exercise one of” the two options set forth “in order to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding.” Rem. Paragraph bridging 3-4. Under 37 C.F.R. §§ 1 The subject matter of claim 11 is addressed on page 10 of the final rejection. Appeal 2010-001208 Application 10/495,434 - 3 - 41.50(a)(2)(i) and (ii), Appellant’s two options are to “[r]equest that prosecution be reopened before the examiner by filing a reply under § 1.111,” and to “[r]equest that the appeal be maintained by filing a reply brief as provided in § 41.41.” See Manual of Patent Examining Procedure (MPEP) §§ 1207.02 and 1121.01 (Rev. 3, August 2005). The record shows that a Supplemental Examiner's Answer was mailed November 12, 2008 in response to the Remand. (Supplemental Answer 1). Therefore, it is clear on the record that in order to continue prosecution of this Application, Appellant had to file a response to the Supplemental Answer as specified in 37 C.F.R. §41.50(a)(2). The record does not reflect that Appellant filed a response to the Supplemental Answer. On this record, Appellant has failed to carry the burden of going forward and concomitantly has waived the right to challenge in this appeal the rejections in the Supplemental Examiner’s Answer since, by operation of rule, the appeal is now dismissed. Accordingly, because Appellant did not file a response and the rejections in the Supplemental Examiner’s Answer encompass all appealed claims, it is ORDERED that the Appeal filed February 16, 2007, is dismissed. This Application is being returned to the Examiner, via the Office of a Director of the Technology Center, for further action as may be appropriate. DISMISSED Appeal 2010-001208 Application 10/495,434 - 4 - PL Initial: sld Ballard Spahr LLP SUITE 1000 999 PEACHTREE STREET ATLANTA GA 30309-3915