Ex Parte Porter et al

Board of Patent Appeals and Interferences

Jan 23, 2009

09876942 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES A. PORTER, ARAM CHRISTIAN ABAJIAN,
KEN ALAN BERKUN, AUSTIN DAVID DAHL,
JOHN ANTHONY DEROSA, ERIC CARL REHM,
SRINIVASAN SUDANAGUNTA, JONATHAN ROBERT NOWITZ,
ROBIN ANDREW ALEXANDER, and SCOTT CHAO-CHUEH LEE
____________
Appeal 2008-3074
Application 09/876,942
Technology Center 2100
____________

Mailed: January 23, 2009
____________

Before DALE M. SHAW, Chief Appeals Administrator
SHAW, Chief Appeals Administrator.

ORDER REMANDING APPEAL TO EXAMINER
This application was electronically received at the Board of Patent
Appeals and Interferences on April 26, 2008. A Docketing Notice was
mailed and Appeal No. 2008-3074 was assigned on May 1, 2008. A review
of the application has revealed that the application was not ready for an
appeal. Accordingly, the Telephonic hearing scheduled for 10:00 am on
Appeal 2008-3074
Application 09/876,942

January 22, 2009, has been canceled and the application is herewith being
remanded to the Examiner. The matter requiring attention is identified
below.
A review of the IFW application reveals that on February 13, 2008,
Appellants filed an Amendment along with a Reply Brief. However, the
record does not indicate that the Examiner has considered the amendment
filed on February 13, 2008.
It is noted that 37 C.F.R. § 41.39(2)(b) states that if a new ground of
rejection has been made Appellant(s) must exercise one of the following two
options:
(2) An examiner’s answer may include a new ground of
rejection.

(b) If an examiner’s answer contains a rejection
designated as a new ground of rejection, appellant must
within two months from the date of the examiner’s answer
exercise one of the following two options to avoid sua
sponte dismissal of the appeal as to the claims subject to
the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be
reopened before the primary examiner by filing a reply
under § 1.111 of this title with or without amendment or
submission of affidavits (§§ 1.130, 1.131 or 1.132 of this
title) or other evidence. Any amendment or submission of
affidavits or other evidence must be relevant to the new
ground of rejection. A request that complies with this
paragraph will be entered and the application or the patent
under ex parte reexamination will be reconsidered by the
examiner under the provisions of § 1.112 of this title. Any
request that prosecution be reopened under this paragraph
will be treated as a request to withdraw the appeal.

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Appeal 2008-3074
Application 09/876,942

(2) Maintain appeal. Request that the appeal be
maintained by filing a reply brief as set forth in § 41.41.
Such a reply brief must address each new ground of
rejection as set forth in § 41.37(c)(1)(vii) and should
follow the other requirements of a brief as set forth in §
41.37(c). A reply brief may not be accompanied by any
amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this
title) or other evidence. If a reply brief filed pursuant to
this section is accompanied by any amendment, affidavit
or other evidence, it shall be treated as a request that
prosecution be reopened before the primary examiner
under paragraph (b)(1) of this section.

Since Appellants filed an Amendment with the Reply Brief the Reply Brief
must be treated as a request to reopen prosecution. This case is remanded to
the Examiner to have prosecution reopened.
Accordingly, it is ORDERED that the application is remanded to the
Examiner:
1) to reopen prosecution in view of the Amendment filed February 13,
2008; and

2) for such further action as may be appropriate.
If there are any questions pertaining to this order, please contact the
Board of Patent Appeals and Interferences at 571-272-9797.

DMS/pgc

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