Ex Parte Pearson

Board of Patent Appeals and Interferences

Sep 3, 2008

10430903 (B.P.A.I. Sep. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN T. PEARSON
____________

Appeal 2008-1959
Application 10/430,903
Technology Center 1700
____________

Decided: September 3, 2008
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
We remand this application to the Examiner for action consistent with
our comments below.
For two reasons, the subject appeal is not ripe for our consideration.
First, the Appeal Brief does not contain an adequate explanation of the
subject matter defined by independent claims 26 and 31. These claims
Appeal 2008-1959
Application 10/430,903

require “means for shorting” (claim 26) and “means for clamping” (claims
26, 31). Under the sixth paragraph of 35 U.S.C. § 112, these claimed means
are to be construed to cover the corresponding structure described in the
Specification and equivalents thereof. In explaining the claimed means, the
Appeal Brief refers to corresponding structure described in the Specification
(App. Br. 3-4) but does not address the equivalents thereof. By failing to
explain the structural equivalents encompassed by the means recitation of
claims 26 and 31, the Appeal Brief fails to comply with 37 C.F.R. §
41.37(c)(1)(v). This failure prevents an informed resolution of the subject
appeal because Appellant expressly argues that the means limitations of the
independent claims patentably distinguishes the appealed claims over the
prior art applied by the Examiner under 35 U.S.C. § 102(b) and § 103(a)
(App. Br. 5-16).
Second, both the Appeal Brief and the Examiner’s Answer have failed
to properly identify and address the appeal status of the obviousness-type
double patenting rejections which are pending in this application. According
to Appellant, “[t]hese obviousness-type double patenting rejections are not
ripe for appeal herewith because the rejections are provisional” (App. Br. 5,
n. 1). This is incorrect. See the Manual of Patent Examining Procedure
(MPEP) § 804 I.B. (Rev. 5, Aug. 2006). Not only may these rejections be
appealed but, if not appealed, the claims so rejected will be treated as having
been withdrawn from the appeal which would then authorize the Examiner
to cancel those claims from the application. See Ex parte Ghuman, 2008
W.L. 2109842 (BPAI 2008 precedential). See also MPEP § 1215.03 (Rev.
6, Sept. 2007). On the other hand, the Examiner’s Answer inconsistently
fails to list these rejections in the “Grounds of Rejection” section (Ans. 4-15)
2
Appeal 2008-1959
Application 10/430,903

while expressly stating in the “Response to Argument” section that these
rejections “still stand for the reasons of record” (Ans. 21).
In light of the foregoing, the Examiner must respond to this remand
by notifying Appellant that the Appeal Brief is deficient. The deficiency
includes noncompliance with 37 C.F.R. § 41.37(c)(1)(v) for failure to
identify the structural equivalents of the “means for shorting” and the
“means for clamping” claim limitations as discussed above. See MPEP
1205.03 (Rev. 3, Aug. 2005). Moreover, if the Examiner intends to maintain
the pending obviousness-type double patenting rejections of record, the
Appellant should be so informed and notified that the Appeal Brief also is
deficient for failing to address these rejections. This last mentioned notice
must include a warning to Appellant that failure to address the obviousness-
type double patenting rejections may result in withdrawal and cancellation
of the rejected claims.
In summary, the Examiner must require Appellant to file a
replacement amended brief which eliminates the aforementioned
deficiencies.
Finally, the Examiner must respond to the replacement amended brief
by issuing a replacement supplemental answer which lists as grounds of
rejection on appeal the currently pending obviousness-type double patenting
rejections (i.e., if these rejections are ultimately maintained by the
Examiner). The replacement supplemental answer also must include
rebuttals to any arguments which many be advanced against these rejections
in the replacement amended brief. Further, the replacement supplemental
answer should include a response, if necessary, to the additional briefing in
the replacement amended brief concerning the independent claim “means”
3
Appeal 2008-1959
Application 10/430,903

limitations, and this response should be in accordance with the guidelines set
forth in MPEP § 2181 (Rev. 6, Sept. 2007).1
This remand to the Examiner pursuant to 37 C.F.R. § 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.
The application is remanded to the Examiner.

REMANDED

ls

SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE.
SUITE 5400
SEATTLE, WA 98104

1 We emphasize that Appellant has a right to file a reply brief in response to
the Examiner’s replacement supplemental answer. However, such a reply
brief as well as the replacement supplemental answer and the replacement
amended brief must be self contained and therefore must not refer back to or
otherwise rely on other documents of record in this appeal (i.e., the Briefs
and Answer currently of record).
4