Ex parte JANG

Board of Patent Appeals and Interferences

Jul 28, 1999

07981126 (B.P.A.I. Jul. 28, 1999)

Application for patent filed November 24, 1992. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HEUNG-GYU JANG
____________
Appeal No. 97-2761
Application No. 07/981,1261
____________
Before KRASS, BARRETT, and FRAHM, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant requests that we reconsider our decision of
March 18, 1999 wherein we affirmed the examiner’s decision
rejecting claims 1 through 6, 8, 10, 14, 16, 18, 19 and 25
through 28 under 35 U.S.C. 103.
Appeal No. 97-2761 Page 2
Application No. 07/981,126
Appellant first argues a procedural point, contending that
it was error on our part not to consider a reply brief which
was not entered into the record by the examiner. Whether or
not an examiner enters a reply brief is a petitionable matter
under 37 CFR 1.181. Since the denial of entry of a reply brief
is not an appealable matter, we have no jurisdiction to
consider a reply brief which has not been entered into the
official record of the case by the examiner.
While the current rule 37 CFR 1.193(b)(1), in effect as of
the date of our decision does, indeed, require the examiner to
either “acknowledge receipt and entry of the Reply Brief or
withdraw the final rejection and reopen prosecution to respond
to the Reply Brief,” it is not the date of our decision which
is dispositive but, rather, the date of filing of the reply
brief which determines which rule applies. Appellant admits
that as of the date of the filing of the reply brief, current
rule 37 CFR 1.193 (b)(1) was not yet in effect and so, at this
time, the examiner had more discretion as to whether or not to
enter a reply brief. In any event, any dispute as to the
propriety of the entry of a reply brief must be resolved by
Appeal No. 97-2761 Page 3
Application No. 07/981,126
petitioning the Commissioner under 37 CFR 1.181. It is not
within our jurisdiction [see 35 U.S.C. 134 and 37 CFR 1.191] to
decide whether an examiner should have entered a reply brief.
Thus, any argument by appellant anent the entry of a reply
brief is unpersuasive to us as to the patentability of the
claims under rejection.
Appellant next contends that our decision committed
reversible error with regard to the claimed feature of an
adhesive tape as compared to the teaching in Uchida of a white
level reference being “fixed in position.” More particularly,
appellant contends that the art did not teach or suggest
appellant’s claimed “adhesive...tape.” As we pointed out in
our decision, Uchida discloses that the white level reference 2
is a “piece of white tape or paper” and that this tape is
“fixed in position.” Since the tape in Uchida is “fixed in
position,” it would have been clear to artisans that the tape
was “adhered” to that position, making it an “adhesive” tape,
as claimed. This suggestion, by Uchida, of employing an
adhesive tape, in view of the artisan’s knowledge that a
Appeal No. 97-2761 Page 4
Application No. 07/981,126
reference scanning surface becomes contaminated through
prolonged use [specification-page 2], would clearly have led
the artisan to employ a removable adhesive tape which is easily
removable and replaceable.
Appellant also contends that the claims call for a
“scanning plate” and that nothing in the applied art shows the
claimed combination of a “scanning plate with a reflective
reference scanning surface” and “an adhesive scanning tape
having a reference color” adhered to the reflective reference
scanning surface. Thus, appellant argues that the art of
record does not disclose both a “scanning plate” and “an
adhesive scanning tape.” However, as we explained, at page 9
of our decision, tape 2 of Uchida is placed over a surface and
becomes the “reflective reference scanning surface,” as
artisans would understand that term. Therefore, Uchida does,
indeed, disclose both a scanning plate and an adhesive scanning
tape, as broadly claimed.
Insofar as appellant makes arguments which refer to the
unentered reply brief, these arguments will not be entertained
Appeal No. 97-2761 Page 5
Application No. 07/981,126
and are unconvincing of any reversible error on our part since,
as explained supra, the reply brief is not properly before us.
We have considered appellant’s request for rehearing and
grant it to the extent that we have reconsidered our decision
but we deny it with respect to making any changes therein.
Appeal No. 97-2761 Page 6
Application No. 07/981,126
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
DENIED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERIC FRAHM )
Administrative Patent Judge )
EAK/jlb
Appeal No. 97-2761 Page 7
Application No. 07/981,126
ROBERT E. BUSHNELL
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