Ex Parte McKnight et al

Board of Patent Appeals and Interferences

Feb 27, 2007

09489793 (B.P.A.I. Feb. 27, 2007)

The opinion in support of the decision being entered today was not written 1
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for publication and is not binding precedent of the Board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 DAVID K. McKNIGHT and EDUARDUS A.T. MERKS
____________________

Appeal 2006-2818
Application 09/489,793
Technology Center 2100
____________________

Decided: February 27, 2007
____________________

Before: ANITA PELLMAN GROSS, ROBERT E. NAPPI, and
ANTON W. FETTING, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER

This is a remand to the Examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004)).

Appeal 2006-2818
Application 09/489,793

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STATEMENT OF CASE
This case comes before us for a decision on appeal under
35 U.S.C. § 134 of the rejection of claims 1 through 13, 16 through 22, 24
through 36, and 40 through 43. The Examiner has indicated that claim 23
contains allowable subject matter.
From our review of the record, we find that the application is not in
condition for decision on appeal for the reasons which follow. Accordingly,
we remand the application to the Examiner to take appropriate action.
The Examiner has rejected claims 1 through 13 and 40 through 43
under 35 U.S.C. § 101.
The Examiner has rejected claims 1 through 13, 16 through 22, 24
through 36, and 40 through 43 under 35 U.S.C. § 103(a).
Claims 8 through 11, 21 and 31 through 34 are multiple dependent claims
which depend upon other multiple dependent claims. Therefore, these claims
are improper (See 37 C.F.R § 1.75 (c) and MPEP 608.01(n)), as the scope of
the claims is indeterminate. However, the Examiner has considered the
claims as being proper and has applied art to them in his rejections. We
remand this case for the Examiner to require that the Appellants place the
claims in proper form (we note that Office policy is for the Examiner to
object to the improper claims and require that they be canceled as set forth in
MPEP 608.01(n)).
The Examiner’s rejection of claims 1 through 13 and 40 through 43
under 35 U.S.C. § 101 states “each of said claims can be fairly interpreted as
a series of mental and/or manual steps (i.e. mentally/manually manipulating,
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Application 09/489,793

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formatting, parsing printed documents, etc.), and is therefore directed to
non-statutory subject matter.” (Answer, page 3), While the claims may in
fact be directed to non-statutory subject matter, the Examiner’s rejection
does not follow the analysis set forth in the Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility,
1300 Off. Gaz. Patent and Trademark Off. (O.G.) 142, 152 (Nov. 22, 2005).
This document is located at the following URL:
8 http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelin
es101_20051026.pdf9
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We encourage the Examiner to apply the analysis set forth in the Interim
Guidelines to support the rejection under 35 U.S.C. § 101.

Thus, we REMAND the application to the Examiner to clarify the
issues noted supra. The Examiner may comply with this remand either by a
supplemental examiner's answer responsive to the above-noted issues or, if
appropriate, by re-opening prosecution to address the above noted issues. It
follows that Appellants should have an opportunity to respond to any such
supplemental answer by way of a further reply brief or via other action as
provided in 37 CFR § 41.50(a)(2).
This remand to the Examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further
consideration of a rejection. Accordingly, 37 CFR § 41.50(a)(2) applies if a
supplemental Examiner's answer is written in response to this remand by the
Board.
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Appeal 2006-2818
Application 09/489,793

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This application, by virtue of its "special" status, requires immediate
action, see MPEP § 708.01 (item D), Eighth Edition, Rev. 3, August 2005.
REMAND 3
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