Ex Parte Plow et al

Board of Patent Appeals and Interferences

Feb 10, 2006

09922182 (B.P.A.I. Feb. 10, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY MAURICE PLOW
and
FARROKH E. POURMIRZAIE
____________

Appeal No. 2006-0014
Application No. 09/922,182
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.

REMAND
The above-identified application is being remanded to the examiner for
appropriate action.
Appeal No. 2006-0014
Application No. 09/922,182

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BACKGROUND
1. Claims 1 to 4, 6 to 11 and 13 to 19 are pending and were finally rejected in the
Office action mailed December 23, 2004.
2. A Notice of Appeal and an Appeal Brief were filed on February 11, 2005. The
status of claims section of the Appeal Brief includes a statement of the status of all the
claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to,
canceled) but does not include an identification of those claims that are being appealed
as required by 37 CFR § 41.37(c)(1)(iii). The summary of the claimed subject matter
section of the Appeal Brief includes a concise explanation of the subject matter defined
in each of the independent claims involved in the appeal but does not include for
independent claim 14 an identification of every means plus function limitation 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 as required by 37 CFR
§ 41.37(c)(1)(v). In addition, the argument section of the Appeal Brief does not treat
each ground of rejection under a separate heading as required by 37 CFR
§ 41.37(c)(1)(vii). The argument section of the Appeal Brief sets forth why the Kim
publication (US 2002/0052925 A1) is not prior art to the claims under appeal.
Appeal No. 2006-0014
Application No. 09/922,182

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3. An Examiner's Answer was mailed on June 13, 2005. In the answer, the
examiner sets forth in a chart (pp. 7-9) why the Kim publication is prior art to the claims
under appeal.
4. A Reply Brief was filed on July 1, 2005. In the Reply Brief, the appellants
argue (pp. 1-4) for the first time why the chart set forth in the answer is insufficient to
establish the Kim publication as prior art to the claims under appeal.
5. On July 13, 2005 an Office communication was mailed noting that the reply
brief had been entered and considered and that the application had been forwarded to
the Board of Patent Appeals and Interferences for decision on the appeal. In this
communication, the examiner did not respond to the arguments raised for the first time
in the Reply Brief.
ACTION
The burden of establishing a prima facie case of anticipation resides with the
examiner. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). Likewise, the examiner bears the initial burden of presenting a prima facie case
of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Appeal No. 2006-0014
Application No. 09/922,182

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Cir. 1993). As such, it is the examiner's burden to establish that Kim is available as
prior art under 35 U.S.C. § 102(e)1 with respect to the claims under appeal.

1 35 U.S.C. § 102(e) provides that a person shall be entitled to a patent unless the invention was
described in a patent granted on an application for patent by another filed in the United States before the
invention by the applicant for patent.
In view of the burden to establish that Kim is available as prior art under
35 U.S.C. § 102(e) resting with the examiner, we remand this application to the
examiner to respond to the arguments raised in the Reply Brief that Kim is not prior art
under 35 U.S.C. § 102(e).

In addition, since the Appeal Brief does not comply with all the requirements of
37 CFR § 41.37(c) as set forth above, we remand this application to the examiner to
notify the appellants of the non-compliance and give the appellants a time period within
which to file an amended brief as provided by 37 CFR § 41.37(d).

CONCLUSION
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) (effective
September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office
Appeal No. 2006-0014
Application No. 09/922,182

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21 (September 7, 2004)) is made for further consideration of a rejection. Accordingly,
37 CFR § 41.50(a)(2) applies if a supplemental examiner's answer is written in
response to this remand by the Board.

This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.

If after action by the examiner in response to this remand there still remains
decision(s) of the examiner being appealed, the application should be promptly returned
to the Board of Patent Appeals and Interferences.

Appeal No. 2006-0014
Application No. 09/922,182

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We hereby remand this application to the examiner for action as required by this
remand, and for such further action as may be appropriate.
REMANDED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2006-0014
Application No. 09/922,182

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JOHN L. ROGITZ
ROGITZ & ASSOCIATES
SUITE 3120
750 B STREET
SAN DIEGO, CA 92101

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