Ex Parte Kumar et al

Board of Patent Appeals and Interferences

Apr 5, 2007

10202150 (B.P.A.I. Apr. 5, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KANTA KUMAR and
CHESTER A. BACON, JR.
____________

Appeal 2006-3344
Application 10/202,150
Technology Center 1700
____________

Decided: April 5, 2007
____________

Before THOMAS A. WALTZ, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This appeal involves claims 1, 3-6, 9, 11-19, and 23. We remand the
application to the jurisdiction of the Examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. §§ 41.35(b) and
41.50(a)(1) (2006).

Appeal 2006-3344
Application 10/202,150

In particular, we remand this application to the Examiner to clarify the
record as to the status of all of the pending claims and as to the rejections
being maintained by the Examiner.
Procedural History
In the Final Rejection mailed November 16, 2005, the Examiner
presented:
(1) a rejection of claims 1, 4-6, 11, 12, 15, 16, 18, 19, and 23 under
35 U.S.C. § 103(a) as unpatentable over Getter (WO 00/12301) in view of
Paeglis (US 4,737,213);
(2) a rejection of claims 3, 9, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Getter (WO 00/12301) in view of Paeglis (US 4,737,213)
and further in view of 3M Scotchlite Reflective Material-High Gloss Series
6200 Product Bulletin (3M);
(3) a rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Getter (WO 00/12301) in view of Paeglis (US 4,737,213)
and further in view of Rega (US 6,054, 208).
On the first page of the Brief filed on March 13, 2006, Appellants
indicate that appeal is being taken from the Examiner’s final rejection of
claims 1, 3-6, 9, 11-19, and 23. However, the Appeal Brief only presents
arguments against the Examiner’s § 103(a) rejection of claims 1, 4-6, 11, 12,
15, 16, 18, 19, and 23, albeit the claims appendix includes claims 3, 9, 13,
14, and 17 and all of claims 1, 3-6, 9, 11-19, and 23 are listed as being
rejected in the “STATUS OF THE CLAIMS” section of the Brief (Br. 2).
In the Answer mailed May 16, 2006, the Examiner agrees with the
rejected status of the claims as presented by Appellants in the Brief. The
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Appeal 2006-3344
Application 10/202,150

Examiner repeats all of the aforementioned 35 U.S.C. § 103(a) rejections in
the Answer.
BASIS FOR REMAND
37 C.F.R. § 41.37(c)(1)(vi) and (vii) (2005) provide that the Appeal
Brief must set forth a “statement of each ground of rejection presented for
review” and “[t]he contentions of appellant with respect to each ground of
rejection presented for review in paragraph (c)(1)(vi) of this section,”
respectively. See also MPEP § 1205.02 (8th ed., Rev. 3, August 2005;
1200-14 – 1200-15). Where Appellants do not present a ground of rejection
for review in the Brief, the appeal is considered to be withdrawn with
respect to that ground and the “withdrawal is treated as an authorization to
cancel the withdrawn claims.” MPEP §§ 1214.05 and 1215.03 (8th ed., Rev.
3, August 2005).
37 C.F.R. § 41.37(d) (September 2004) provides that Appellants will
be notified of any deficiency in the Brief under the rules and provided with
the opportunity to correct the deficiency. See MPEP § 1205.03 (8th ed.,
Rev. 3, August 2005).
Here, the Examiner should afford Appellants an opportunity to clarify
the record as to whether or not the separate rejections of claims 3, 9, 13, 14,
and 17 under 35 U.S.C. § 103(a), as set forth in the Final Rejection, are
being appealed or whether Appellants are, in effect, waiving their right to
pursue these rejected claims in this application (appeal withdrawn as to these
claims). The Examiner should take appropriate action consistent with
current examining practice and procedure to notify Appellants of the
deficiency in the Brief with respect to the lack of argument therein
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Appeal 2006-3344
Application 10/202,150

respecting the grounds of rejection of appealed claims 3, 9, 13, 14, and 17
under 35 U.S.C. § 103(a), which grounds of rejection are being maintained
by the Examiner.
The Examiner should provide Appellants with the opportunity to
clarify the present record and cure the Brief with regard to same in order to
avoid withdrawal of the appeal and its consequences with respect to all of
the affected appealed claims, with a view toward placing this application in
condition for decision on appeal, with respect to the issues presented.

ORDER
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to rectify the
above-noted matters.
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center involved, for appropriate action in view
of the above comments.
This application, by virtue of its “special” status, requires immediate
action.

REMANDED

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