Ex Parte Ho

Board of Patent Appeals and Interferences

Jul 15, 2008

09587721 (B.P.A.I. Jul. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WINGA HO
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Appeal 2008-0050
Application 09/587,721
Technology Center 2100
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Decided: July 15, 2008
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Before JAMES D. THOMAS, LANCE LEONARD BARRY,
and JEAN R. HOMERE, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

ORDER REQUIRING APPELLANT TO BRIEF AN
ADDITIONAL MATTER

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-20. Winga Ho ("Ho" or "the
Appellant") appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b) and exercise our jurisdiction in
addressing two issues.
Appeal 2008-0050
Application 09/587,721

II. SUMMARY OF CLAIMED SUBJECT MATTER
When the Appellant filed the Appeal Brief (Substitute), such a brief
was required to include "[a] concise explanation of the subject matter
defined in each of the independent claims involved in the appeal, which shall
refer to the specification by page and line number, and to the drawing, if
any, by reference characters." 37 C.F.R. § 41.37(c)(1)(v)(2006)(emphasis
added).1 "Because it enables the Board to more quickly determine where the
claimed subject matter is described in a patent application, reference to such
characters is always important." Ex parte Nelson, No. 2007-3534, 2008 WL
1957935 (BPAI 2008).

Here, although the Appellant's Summary of Claimed Subject Matter
refers to pages and line numbers of the Specification (Sub. Appeal Br. 2-4),
it does not refer to any of Ho's eight figures, let alone to any of the reference
characters thereof.

We decline to substitute our speculation for the greater certainty that
should come from Ho. More specifically, the Appellant must submit a
substitute Summary of Claimed Subject Matter that maps the individual
limitations of each of independent claims 1 and 17 to individual reference
characters of the figures.

1 We cite to the version of the Code of Federal Regulations in effect when
Ho filed the Appeal Brief (Substitute).

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Appeal 2008-0050
Application 09/587,721

III. PLURAL REPLY BRIEFS
An appellant may file a single "reply brief to an examiner's answer
within two months from the date of the examiner's answer." 37 C.F.R.
§ 41.41(a)(1).

Here, the record includes a plurality of examiner's answers, each
followed by a reply brief. Because § 41.41(a)(1) permits only a single reply
brief, we will consider only one of the Appellant's reply briefs. More
specifically, we will consider only the last Third Reply Brief, which was
filed July 17, 2007 and follows the only answer that was not defective. If
the Appellant wishes us to consider one of the other reply briefs, that choice
must be made in writing along with the aforementioned substitute Summary
of Claimed Subject Matter

IV. CONCLUSION
Because of the aforementioned omissions, we are persuaded that
"[t]he appeal is manifestly not ready for a decision on the merits." Ex parte
Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Under 37 C.F.R.
§ 41.50(d), we give the Appellant a non-extendable time period of thirty
days within which to respond to this order. Failure to comply with the order
within that time may result in the sua sponte dismissal of this appeal.
37 C.F.R. § 41.50(d).

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Appeal 2008-0050
Application 09/587,721

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDERED; 37 C.F.R. § 41.50(d)

rwk

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