Ex Parte Neoh et al

Board of Patent Appeals and Interferences

Sep 27, 2007

09895153 (B.P.A.I. Sep. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KOON GEE NEOH,
EN-TANG KANG, SOCK WEE NG,
and JEYAGOWRY T. SAMPANTHAR
______________

Appeal 2007-4405
Application 09/895,153
Technology Center 1700
_______________

Decided: September 27, 2007
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
REMANDING TO THE EXAMINER
We remand the application to the Examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. § 41.50(a)(1) (2007);
Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 5,
August 2006).
The Official electronic records of the USPTO contain the following
documents for this application:
Appeal 2007-4405
Application 09/895,153
Appeal Brief filed June 6, 2006.
Examiner’s Answer mailed August 1, 2006, “in response to the Appeal Brief
filed June 6, 2006.”
Reply Brief filed September 26, 2006.
Examiner’s Communication of September 29, 2006, acknowledging receipt
and entry of the Reply Brief filed September 26, 2006.
Board Order Returning Undocketed Appeal to Examiner entered November
22, 2006, for correction of the Appeal Brief with respect to certain
procedural requirements.
Substitute Appeal Brief filed December 29, 2006, complying with Order.
Examiner’s Answer electronically delivered April 5, 2007, “in response to
the appeal brief filed June 6, 2006,” with no change in content from the
Answer mailed August 1, 2006.
Reply Brief filed June 5, 2007, stating “[t]his refers to the Examiner’s
Answer dated April 5, 2007,” with different substantive content than the
Reply Brief filed September 26, 2006.
Examiner’s Answer electronically delivered June 7, 2007, “in response to
the appeal brief filed June 6, 2006,” with no change in substantive content
from the Answer mailed August 1, 2006, adding only information with
respect to a procedural requirement.
Reply Brief filed August 6, 2007, stating “[t]his refers to the Examiner’s
Answer dated June 7, 2007,” with different substantive content than the
Reply Brief filed September 26, 2006, and the Reply Brief filed June 5,
2007.
Examiner’s Communication electronically delivered August 13, 2007,
acknowledging receipt and entry of the Reply Brief filed August 6, 2007.
The Official electronic record does not indicate the Examiner
acknowledged the Reply Brief filed June 5, 2007, in any respect.
The following rules apply to the filing of a reply brief, the Examiner’s
response to a reply brief, and a supplemental reply brief.

- 2 -
Appeal 2007-4405
Application 09/895,153

37 C.F.R. §41.41 (2005)
(a)(1) Appellant may file a reply brief to an examiner’s answer
within two months from the date of the examiner’s answer.
37 C.F.R. §41.43 (2005)
(a)(1) After receipt of a reply brief in compliance with § 41.41, the
primary examiner must acknowledge receipt and entry of the reply
brief. In addition, the primary examiner may withdraw the final
rejection and reopen prosecution or may furnish a supplemental
examiner’s answer responding to any new issue raised in the reply
brief.
. . . .
(b) If a supplemental examiner’s answer is furnished by the
examiner, appellant may file another reply brief under § 41.41 to
any supplemental examiner’s answer within two months from the
date of the supplemental examiner’s answer.
It is clear from the record that the Examiner’s Answers delivered to
Appellants on April 5, 2007, and June 7, 2007, constituted a “supplemental
examiner’s answer” within the meaning of 37 C.F.R. § 41.43(a)(1) that
requires the filing of a supplemental reply brief under 37 C.F.R. §41.43(b).
See also MPEP § 1208 (8th ed., Rev. 5, August 2006). Thus, the Reply
Briefs filed June 6, 2007, and August 8, 2007, was improperly submitted.
Further, the Examiner’s entry and consideration of the Reply Brief filed
August 8, 2007, was improper. The Examiner has not responded to the
Reply Brief filed June 6, 2007.
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to clarify the
record with respect to the status of the Reply Brief filed June 6, 2007, which
has not been acknowledged by the Examiner, and with respect to the status
- 3 -
Appeal 2007-4405
Application 09/895,153
of the Reply Brief filed September 26, 2006, and the Reply Brief filed
August 6, 2007, under the above rules, with a view toward placing this
application in condition for decision on appeal with respect to the issues
presented.
This remand is not made for the purpose of directing the Examiner to
further consider a ground of rejection.
This remand is not made for the purpose of directing the examiner to
further consider the grounds of rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) (2005) does not apply.
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center, for appropriate action in view of the
above comments.

REMANDED

tc/ls

BIRCH STEWART KOLASCH & BIRCH
PO BOX 747
FALL CHURCH, VA 22040-0747
- 4 -