Ex Parte Mukai et al

Board of Patent Appeals and Interferences

Oct 31, 2008

09910583 (B.P.A.I. Oct. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN MUKAI
and SHANKAR CHANDRAN
____________

Appeal 2008-4473
Application 09/910,583
Technology Center 1700
____________

Decided: October 31, 2008
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This case is not ripe for review and is, therefore, remanded to the
Examiner for appropriate action. 37 C.F.R. § 41.50(a) (1); see also Manual
of Patent Examining Procedure § 1211 (Eighth ed., Rev. 6, September
2007).
The Examiner relies on, inter alia, the computer translation of the
Korean Unexamined Patent Application Publication 2001055915 published
Appeal 2008-4473
Application 09/910,583

on July 4, 2001(hereinafter “Yang”) in the ground of rejection set forth at
page 3 of the Answer. However, the computer translation is not sufficiently
complete and clear to properly consider the ground of rejection on appeal.
To determine the propriety of the Examiner’s ground of rejection set
forth in the Answer, we need to understand all of the specific teachings of
the prior art references, as well as any inferences one of ordinary skill in this
art would have reasonably been expected to draw therefrom. See In re
Fritch, 972 F.2d 1260, 1264-65, (Fed. Cir. 1992); In re Preda, 401 F.2d 825,
826 (CCPA 1968). This, of course, requires an accurate English translation
of the full disclosure of Yang.

ORDER
Accordingly, it is ORDERED that the Examiner
1) Supply an accurate English translation of the full disclosure of
Yang; and
2) Provide, if appropriate and necessary in view of the accurate
English translation of the full disclosure of Yang, a further explanation of
the facts and reasons supporting the ground of rejection set forth in the
Answer via a Supplemental Answer.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) applies if a supplemental examiner's answer is written in
response to this remand by the Board.
REMANDED

cam
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Appeal 2008-4473
Application 09/910,583

APPLIED MATERIALS/BSTZ
BLAKELY SOKOLOFF TAYLOR
& ZAFMAN, LLP
1279 OAKMEAD PARKWAY
SUNNYVALE CA 94085-4040

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