Ex Parte Merchant

Board of Patent Appeals and Interferences

Jan 8, 2008

09546962 (B.P.A.I. Jan. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER MERCHANT
____________

Appeal 2007-2346
Application 09/546,962
Technology Center 2800
____________

Decided: January 8, 2008
____________

Before LANCE LEONARD BARRY, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

ORDER REQUIRING APPELLANT
TO BRIEF AN ADDITIONAL MATTER

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-6, 8-10, 12-18, 20, 21, and 23.
The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2007-2346
Application 09/546,962

II. ILLUSTRATIVE CLAIM
Claim 23, which illustrates the invention, follows.
23. A system for scanning a target, comprising:

means for providing a light beam;

reflector means for reflecting a first portion of the light
beam;

expander means for reflecting a second portion of the
light beam from the reflector means onto the target, the
expander means comprising a polished round pillar having a
cylindrical reflective outer surface; and

means for varying the shape of the reflector means, by
which at least a portion of the target is scanned with the second
portion of the light beam.

III. LEGAL PRINCIPLES
When the Appellant filed his Appeal Brief, such a brief was required
to include "[a] concise explanation of the subject matter defined in each of
the independent claims involved in the appeal, which shall refer to the
specification by page and line number, and to the drawing, if any, by
reference characters." 37 C.F.R. § 41.37(c)(1)(v)(2006)(emphasis added).1
Furthermore, "[f]or each independent claim involved in the appeal and for
each dependent claim argued separately under the provisions of 37 CFR
41.37(c)(1)(vii), every means plus function and step plus function as

1 We cite to the version of the Code of Federal Regulations in effect when
the Appellant filed his Supplemental Brief on Appeal.

2
Appeal 2007-2346
Application 09/546,962

permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the
structure, material, or acts described in the specification as corresponding to
each claimed function must be set forth with reference to the specification
by page and line number, and to the drawing, if any, by reference
characters." Id. (emphasis added).

IV. ANALYSIS
Here, the instant appeal involves independent claims 1, 15,2 21, and
23. Although the Appellant’s Summary of Claimed Subject Matter
refers to pages and line numbers of his Specification (Br. 2-3), it does not
refer to any of the Appellant's thirteen figures, let alone to any of the
reference characters thereof. Because it enables the Board to more quickly
determine where the claimed subject matter is described in a patent
application, reference to such characters is always important.

Furthermore, independent claim 23 includes four means-plus-function
elements. The Summary fails to identify the structure, material, or acts
described in the Specification as corresponding to each, individual claimed
function. Instead, it merely reiterates the claim in toto and then refers to
three parts of the Specification as examples, viz., "[s]ee e.g., page 5, lines 2-
5, page 5 lines 8-9 and page 3 lines 17-23)." (Id. 3.)

2 The paragraph of the Appellant’s Summary of Claimed Subject Matter
summarizing claim 15, however, refers to "claim 5" [sic]. (Br. 2.)
3
Appeal 2007-2346
Application 09/546,962

V. ORDER
We decline to substitute our speculation for the greater certainty that
should come from the Appellant. More specifically, the Appellant must
submit a substitute Summary of Claimed Subject Matter that maps the
individual limitations of claims 1, 15, 21, and 23 to individual reference
characters of his figures. Furthermore, the Appellant must identify each
"means plus function" limitation in claim 23 and provide a mapping of each
such limitation to specific pages and line numbers of his Specification and to
specific reference characters of his figures.

Any additional brief submitted by the Appellant must be self-
contained with respect to all arguments. No prior briefs should be
referenced or incorporated therein. Furthermore, any additional Answer
submitted by the Examiner should be self-contained with respect to all
rejections and arguments; no prior Answer or Office action should be
referenced or incorporated therein.

Under 37 C.F.R. § 41.50(d), we give the Appellant a non-extendable
time period of thirty days within which to respond to this order. Failure to
comply with the order within that time may result in the sua sponte dismissal
of his appeal. 37 C.F.R. § 41.50(d).

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDERED; 37 C.F.R. § 41.50(d)
4
Appeal 2007-2346
Application 09/546,962

ce

Himanshu S Amin Esq
Amin Eschweiler & Turocy LLP
24th Floor National City Center
1900 East 9th St
Cleveland OH 44114
5