Ex Parte Lederman

Board of Patent Appeals and Interferences

Feb 26, 2008

10067515 (B.P.A.I. Feb. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN LEDERMAN
____________

Appeal 2008-1295
Application 10/067,515
Technology Center 1700
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Decided: February 26, 2008
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM
and JEFFREY T. SMITH,, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
The above-identified application is hereby remanded to the Examiner,
via the Director for Technology Center 1700, for appropriate action
consistent with our comments below.

Appeal 2008-1295
Application 10/067,515

The record for this application reflects that, on June 23, 2004, an
amended Appeal Brief was filed from the Examiner’s final rejections of
claims 21-60. Ultimately, on June 20, 2007, an Examiner’s Answer was
mailed in response to Appellant’s Appeal Brief.
A number of the aforementioned final rejections were not listed in this
Answer. Therefore, we presume these non-listed final rejections were
implicitly withdrawn by the Examiner.
More importantly, the Answer contains a section entitled
“NEW GROUND(S) OF REJECTION” (Ans. 6). In this Section of the
Answer, claims 28, 30, 33-38, and 40 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Saleeb et al. (U.S. Patent No. 5,028,446) in view
of Andon et al. (WO 92/19251) and Andon (U.S. Patent No. 5,468,506) and
Keating (U.S. Patent No. 5,500,232) (id). This section of the Answer also
includes a rejection of claims 43-60 under 35 U.S.C. § 103(a) “as being
unpatentable over the above-combined references as applied to the above
claims, and further in view of Andon (5,468,506)” (Ans. 8).
According to the electronic file record for this application, Appellant
has failed to reply to the above-noted new grounds of rejections.
Concerning this matter, the Manual of Patent Examining Procedure (MPEP)
contains the following instructions at § 1207.03, V, C:
If Appellant fails to timely file a reply under 37
CFR § 1.111 or a reply brief in response to an
examiner’s answer that contains a new ground of
rejection, the appeal will be sua sponte dismissed as to
the claims subject to the new ground of rejection”
(p. 1200-39; Rev. 3, August 2005).

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Appeal 2008-1295
Application 10/067,515

When less than all of the appealed claims are subject to new grounds of
rejection to which no reply has been made, the previously mentioned section
of the MPEP provides the following guidance:
If only some of the claims under appeal are
subject to the new ground of rejection, the dismissal
of the appeal as to those claims operates as an
authorization to cancel those claims and the appeal
continues as to the remaining claims. The examiner
must:

(1) Cancel the claim subject to the new ground
of rejection; and

(2) Notify the appellant that the appeal as to
the claims subject to the new ground of rejection is
dismissed and those claims are canceled.

The electronic file record for this application also reflects that the
Examiner has failed to follow the above-discussed MPEP guidelines. In order
to rectify this failure, we hereby remand the application to the Examiner. To
the extent necessary or desirable, the Examiner’s response to this Remand may
include a Supplemental Examiner’s Answer pursuant to 37 C.F.R. §
41.50(a)(2).

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Appeal 2008-1295
Application 10/067,515

This application, by virtue of its “special” status, requires an immediate
action; see MPEP § 708.01(D). It is important that the Board be promptly
informed of any action affecting the appeal in this case.

REMANDED

PL initials:
sld

STEVEN N. LEDERMAN
1247 S. GENE AUTRY TRAIL
PALM SPRINGS CA 92264
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