Ex Parte Michelson

Board of Patent Appeals and Interferences

Nov 14, 2007

08354450 (B.P.A.I. Nov. 14, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GARY K. MICHELSON
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Appeal 2007-3157
Application 08/354,450
Technology Center 3700
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Decided: November 14, 2007
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Before LORA M. GREEN, NANCY J. LINCK, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

REMAND TO THE EXAMINER
A review of the application has revealed that the appeal is not ready
for a decision on the merits. Accordingly, the application is being remanded
to the Examiner for further action.
Appeal 2007-3157
Application 08/354,450

The Examiner objected to the amendment filed January 7, 2004,
contending that it introduced new matter into the disclosure (Answer1 3).
The Examiner specifically listed seven of the amendments to the
Specification that presented new matter, and then rejected claims 29-300
under 35 U.S.C. § 112, first paragraph, as containing new matter (Answer
6).
In the discussion of the seven amendments, the Examiner referred to
specific claims as “Examples” of claims that contained the objected to
language. Thus, as to the first amendment, which was designated as “a),”
the Examiner stated that the “claims recite ‘said flexible member being in at
least in part curved when said flexible member is in contact with the tissue’
(claim 29 lines 10-11 for example).” (Answer 3.)
Appellant argues that “the features which the Examiner identified as
not being adequately supported concern claims 29-59, 65, 66, 100-143, 145,
148-150, 183-185, 211-241, 245-247, and 293-300. The Examiner has not
provided any rationale as to why claims 60-64, 67-99, 144, 146, 147, 151-
182, 186-210, 242-244, and 248-292 are rejected under 35 U.S.C. § 112,
first paragraph.” (Br.2 13-14.)
The Examiner, in response, pointed to more examples of claims that
contain the objected to language, such as claims 60, 144, 29-59, and 100-143
(Answer 15.)
The Board serves as a board of review, not a de novo examination
tribunal. See 35 U.S.C. § 6(b) (“The [board] shall, on written appeal of an

1 All references to the Answer are to the Examiner’s Answer mailed July 1,
2005.
2 All references to the Brief are to the Appeal Brief dated April 20, 2005.
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Appeal 2007-3157
Application 08/354,450

applicant, review adverse decisions of examiners upon applications for
patents.”). The burden is on the Examiner to set forth a prima facie case of
unpatentability. See In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
We are unable to review the rejection of claims 29-300 as the
Examiner has not set forth reasons why each claim on appeal contains
language that has been objected to as being new matter. After carefully
reviewing the Examiner’s Answer, as well as the Supplemental Examiner’s
Answer, we cannot find any statement of rejection that would appear to
apply to claims 100-143, 176, 179-210 and 242-300. The Examiner needs to
clearly state which claims contain the objected to subject matter, and explain
why the subject matter of the rejected claims constitutes new matter.
The Examiner asserts that “a review of the . . . claims will reveal
whether or not these claims contain the language the examiner is referring
to.” (Supplemental Answer 4.)3 The burden is on the Examiner, however,
to reject the claims, and it is not the responsibility of Appellant, nor the
Board on Appeal, to determine which rejections apply to which claims.
Thus, upon return of the electronic file, the Examiner needs to
explicitly state which claims contain the objected to language, and why the
language constitutes new matter.
The Examiner also made a statement “[r]egarding claims 33, 105,
148, 183, 214, and 245, the same arguments above would apply here as well.
It is not clear how much weight can be given the functional intended use
claim language.” (Answer 15.) It is unclear, however, which arguments are
“the same arguments” the Examiner is referring to. The Examiner makes

3 All references to the Supplemental Answer are to the Supplemental
Examiner’s Answer mailed December 1, 2005.
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Appeal 2007-3157
Application 08/354,450

similar statements regarding claims 34, 65, 106, 149, 184, 215, and 246,
claims 35, 66, 107, 150, 185, 216, and 247, claim 145, and claims 211-241
(Answer 15), and again it is unclear how the rejection applies to the claims
based on the statements made by the Examiner.
The Examiner also rejected claims 29-300 under 35 U.S.C. § 112,
second paragraph, as being indefinite. According to the Examiner:
It is not clear what the metes and bounds of the claims
are since the claim language noted above has no clear support
in the specification as originally filed. For example, it is not
clear how much weight can be given the language that the
flexible member forms an acute angle relative to the
longitudinal axis of the shaft since the device is not made that
way. There is no disclosure for the flexible head member being
formed at an acute angle to the shaft. The angle the flexible
head makes with the shaft is dependent on how it is placed in
the body.

(Answer 6-7.)
The rejection under second paragraph is merely a statement that the
Examiner is unclear what weight to give the purported new matter, and does
not state how the claims do not meet the requirements of 35 U.S.C. § 112,
second paragraph. Moreover, it is unclear what claim or claims contain the
language “that the flexible member forms an acute angle relative to the
longitudinal axis of the shaft.” Upon return of administrative file, if the
Examiner maintains the rejection under 35 U.S.C. § 112, second paragraph,
the Examiner needs to explicitly address each claim and explain why the
claim does not meet the requirements of 35 U.S.C. § 112, second paragraph.

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Appeal 2007-3157
Application 08/354,450

CONCLUSION
In summary, upon return of the electronic administrative file, the
Examiner needs to explicitly state which claims contain the objected to
language, and why the language constitutes new matter. The Examiner
should also revisit the rejection under 35 U.S.C. § 112, second paragraph,
and may also wish to reconsider the rejection of claims 29-300 under 35
U.S.C. § 112, second paragraph, in view of the comments above.

REMANDED
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