Ex Parte Huizer

Board of Patent Appeals and Interferences

May 24, 2010

10082857 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CORNELIS MARINUS HUIZER
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Appeal 2009-005962
Application 10/082,857
Technology Center 2400
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Decided: May 24, 2010
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Before JOHN A. JEFFERY, JAMES D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7. Br. 3-7. Claims 1-7, 14, and 15, however, are
rejected under a new ground of rejection. Ans. 3-5. Claims 8-13 have been
allowed. Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b). Because
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Application 10/082,857

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Appellant has not responded to the new ground of rejection under 37 C.F.R.
§ 41.39(b), we dismiss the appeal.

STATEMENT OF THE CASE
Appellant invented an arrangement for embedding extra information
into video content. See generally Spec. 3.

THE REJECTION
The Examiner newly rejected claims 1-7, 14, and 15 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Ans. 3.1

PRINCIPLES OF LAW
Section 41.39(b) of Title 37 of the Code of Federal Regulations states:
If an examiner’s answer contains a rejection designated as a new
ground of rejection, appellant must within two months from the date
of the examiner’s answer exercise one of the following two options to
avoid sua sponte dismissal of the appeal as to the claims subject to the
new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened
before the primary examiner by filing a reply under § 1.111 of this
title with or without amendment or submission of affidavits (§§ 1.130,
1.131 or 1.132 of this title) or other evidence. Any amendment or
submission of affidavits or other evidence must be relevant to the new
ground of rejection. A request that complies with this paragraph will
be entered and the application or the patent under ex parte

1 Throughout this opinion, we refer to the Appeal Brief filed May 21, 2007
and the Examiner’s Answer mailed October 19, 2007.
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Application 10/082,857

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reexamination will be reconsidered by the examiner under the
provisions of § 1.112 of this title. Any request that prosecution be
reopened under this paragraph will be treated as a request to withdraw
the appeal.

(2) Maintain appeal. Request that the appeal be maintained by
filing a reply brief as set forth in § 41.41. Such a reply brief must
address each new ground of rejection as set forth in § 41.37(c)(1)(vii)
and should follow the other requirements of a brief as set forth in
§ 41.37(c). A reply brief may not be accompanied by any amendment,
affidavit (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. If a
reply brief filed pursuant to this section is accompanied by any
amendment, affidavit or other evidence, it shall be treated as a request
that prosecution be reopened before the primary examiner under
paragraph (b)(1) of this section.

ANALYSIS
Based on the record before us, we must dismiss this appeal on
procedural grounds. There is only one rejection in the Examiner’s
Answer—a new ground of rejection under § 101—and Appellant has simply
not responded to that new rejection. That failure to respond is fatal to this
appeal.
Notably, the Examiner prominently identified the § 101 rejection as a
new ground of rejection. Ans. 3. The Technology Center Director approved
the new ground of rejection in accordance with standard procedure.2 Ans. 6.
The Examiner also unambiguously explained that Appellant must, within
two months of the mailing date of the Answer (October 19, 2007), exercise
one of two regulatory options to avoid sua sponte dismissal of the appeal as

2 See Manual of Patent Examining Procedure (MPEP) § 1207.03(I), Rev. 3,
Aug. 2005 (“MPEP”) (noting that a Technology Center Director or designee
must approve new grounds of rejection in an Examiner’s Answer).
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Application 10/082,857

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to the claims subject to the new ground of rejection (i.e., claims 1-7, 14, and
15). Ans. 4-5. As the Examiner indicated, Appellant’s regulatory options
were to: (1) reopen prosecution by filing a reply under 37 C.FR. § 111, or
(2) maintain the appeal by filing a Reply Brief as set forth in 37 C.F.R.
§ 41.41. See 37 C.F.R. § 41.39(b).
Appellant, however, did not respond to the Answer at all, let alone
select one of the regulatory options as mandated. That failure to respond is
therefore fatal to this appeal under 37 C.F.R. § 41.39(b).
We acknowledge that there is some overlap between the Examiner’s
final rejection and the new ground of rejection regarding claims 1-7.
Compare Fin. Rej. 3 with Ans. 3. That overlap, however, does not otherwise
relieve Appellant of the regulatory requirement to respond to the new ground
of rejection to avoid dismissal. See 37 C.F.R. § 41.39(b).
We therefore find that Appellant failed to avoid sua sponte dismissal
of the appeal as to claims 1-7, 14, and 15, which are the claims subject to the
new ground of rejection. See 37 C.F.R. § 41.39(b). Since the remaining
pending claims 8-13 have been indicated as allowable (Ans. 3), there is no
rejection before us to review. We therefore dismiss the appeal.

CONCLUSION
We dismiss the appeal as to claims 1-7, 14, and 15 which are subject
to a new ground of rejection under § 101.

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Application 10/082,857

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The Examiner must: (1) cancel claims 1-7, 14, and 15, and (2) notify
Appellant that these claims are cancelled because the appeal as to these
claims is dismissed. See MPEP § 1207.03(V)(C).

ORDER
The appeal is dismissed.

DISMISSED

pgc

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