10122095 (B.P.A.I. Sep. 20, 2007)

Ex Parte Kouznetsov et al

Board of Patent Appeals and InterferencesSep 20, 2007

10122095 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte VICTOR KOUZNETSOV, DAVIDE LIBENZI, MARTIN FALLENSTEDT, DAVID W. PALMER, and MICHAEL C. PAK ____________________ Appeal 2007-1499 Application 10/122,095 Technology Center 2100 ____________________ Decided: September 20, 2007 ____________________ Before ALLEN R. MACDONALD, JEAN R. HOMERE, and MARC S. HOFF, Administrative Patent Judges. HOFF, Administrative Patent Judge. ORDER REMANDING TO THE EXAMINER This is a remand of the appeal under 35 U.S.C. § 134 from the rejection of claims 1-31, in accordance with 37 C.F.R. § 41.50(a)(1). After considering the record before us, we are convinced that the instant appeal is not ready for meaningful review. Accordingly, we hereby remand the application to the Examiner to consider the following issues, and to take appropriate action. Appeal 2007-1499 Application 10/122,095 Clarification of rejection of claims 1-31 under 35 U.S.C. § 112, first paragraph Claims 1-31 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Specifically, the Examiner asserts that Appellants lack support in the Specification for the claim limitation added by amendment, “wherein the mobile wireless device is updated in a manner that is coordinated with a plurality of other mobile wireless devices for maintaining the performance of the wireless network.” Appellants assert that support for the limitation may be found, inter alia, in Application No. 10/121,087. The instant application is a continuation of that application, and Appellants incorporated the parent application by reference in its entirety (Specification 1). The Examiner did not contest the presence of the material in the parent application, nor the propriety of Appellants’ incorporation of the material by reference. Rather, the Examiner “notes that this statement fails to appear anywhere in the instant application,” so that “[t]hus, it is clearly seen that claims 1-31 contain subject matter that was not described in the instant specification in such a way as to reasonably convey to one skilled in the relevant art that Appellant, at the time the application was filed, had possession of the claimed invention” (Examiner’s Answer 18, emphasis original). The Examiner is hereby requested to state the legal basis for his position that, notwithstanding Appellants’ proper incorporation of essential material by reference, the material at issue must nevertheless be affirmatively present within the instant Specification. 2 Appeal 2007-1499 Application 10/122,095 Clarification of rejection of claims under 35 U.S.C. § 103(a) As noted supra, claims 1-31 stand rejected under 35 U.S.C. § 112, first paragraph, as having an inadequate written description, specifically that support is not present for the claim limitation “wherein the mobile wireless device is updated in a manner that is coordinated with a plurality of other mobile wireless devices for maintaining the performance of the wireless network.” Claims 1-5, 7-11, 13-17, and 19-31 also stand rejected under 35 U.S.C. § 103(a). In explaining the prior art rejections, the Examiner’s position with regard to the “updating” limitation discussed supra is that, because the Specification does not support it, “no prior art need be cited to reject the claimed limitation in question” (Examiner’s Answer 19, 23). The Examiner is hereby requested to state the legal basis for his position that a claim limitation asserted to lack support under 35 U.S.C. § 112 may be ignored when formulating a rejection under 35 U.S.C. § 103. 3 Appeal 2007-1499 Application 10/122,095 CONCLUSION This remand to the examiner pursuant to 37 C.F.R. § 41.50(a)(1) is made for further consideration of a rejection. Accordingly, 37 C.F.R § 41.50(a)(2) applies if a supplemental examiner's answer is written in response to this remand by the Board. REMAND rwk Zilka-Kotab, PC P.O. BOX 721120 SAN JOSE CA 95172-1120 4