Ex Parte Pramann et al

Board of Patent Appeals and Interferences

Nov 28, 2007

10280400 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte JAMES A. PRAMANN, II, DIANA ORZECHOWSKI and
PATRICK W. BIXENMAN
___________

Appeal No. 2007-4053
Application No. 10/280,400
Technology Center 3600
___________

Decided: November 28, 2007
___________

Before TERRY J. OWENS, MURRIEL E. CRAWFORD and ANTON W.
FETTING, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

REMAND TO THE EXAMINER
In the Final Rejection (mailed July 12, 2005, pp. 2-5) the Examiner states
that the claims are rejected as follows: claims 17-24, 41 and 43-45 under
35 U.S.C. § 102(b) as anticipated by US 5,875,852 to Floyd et al. (Floyd), claims
42 and 47 under 35 U.S.C. § 103 as obvious over Floyd, and claim 46 under
35 U.S.C. § 103 as obvious over Floyd in view of US 6,325,144 to Turley et al.
(Turley).
Appeal 2007-4053
Application 10/280,400
In the After Final Response and Amendment (filed Sep. 6, 2005) the
Appellants state that “[t]he examiner rejected claims 17-24 and 41-47 under
35 U.S.C. § 102(b) as being anticipated by Floyd et al., U.S. 5,475,852”, and the
Appellants request that new claim 48 be entered (p. 7). A “DO NOT ENTER”
notation appears on the first page of that After Final Response and Amendment.
In the Advisory Action (mailed Sep. 16, 2005) the Examiner indicates that
the After Final Response and Amendment will not be entered, but the Examiner
omits the status of the claims.
In the Pre-Appeal Brief Request for Review (filed Oct. 12, 2005) the
Appellants state (p. 1):
Claims 17-24 and 41-47 are pending in this Application. Claims 17-
24, 41 and 43-45 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Floyd et al., U.S. 5,875,852 (hereinafter, “the ‘852 patent”). Claims 42
and 47 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the
‘852 patent. Claim 46 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the ‘852 patent in view of Turkey [sic, Turley] et al,
U.S. 6,325,144.

In the Notice of Panel Decision from Pre-Appeal Brief Review (mailed Nov.
21, 2005) the Examiner indicates that the rejected claims are claims 17-24 and 41-
47.
In the Appeal Brief (filed Dec. 21, 2005) the Appellants state (p. 2):
Claims 17-24 and 41-47 are pending in the case and stand rejected.
Appellant appeals the rejection of claims 17-24 and 41-47. Claims 1-16 and
25-40 have been canceled.

The Appellants’ Grounds of Rejection to be Reviewed section of the Appeal Brief
(p. 3), however, includes only the anticipation rejection of independent claims 17
2
Appeal 2007-4053
Application 10/280,400
and 41 under 35 U.S.C. § 102(b) over Floyd. Yet in the Summary section of the
Appeal Brief (p. 5) the Appellants state:
Appellant respectfully submits that the inventions as claimed in
independent claims 17 and 41 are novel and unobvious. Appellant further
submits that Floyd et al. fails to disclose or suggest a sealing element having
a side thicker than the remainder of the body and the examiner [sic] and
therefore claims 17-24 and 41-47 are not anticipated.

In the Examiner’s Answer (mailed Mar. 14, 2006) the Examiner states (p. 3):
“Claims 17 and 41 are rejected under 35 U.S.C. 102(b) as being anticipated by
Floyd et al., U.S. 5,875,852, as set forth in the final office action mailed 12 July
2005.” In the Examiner’s Answer the Examiner does not mention the rejections
set forth in the Final Rejection of claims 18-24 and 43-45 under 35 U.S.C. § 102(b)
as anticipated by Floyd, claims 42 and 47 under 35 U.S.C. § 103 as obvious over
Floyd, and claim 46 under 35 U.S.C. § 103 as obvious over Floyd in view of
Turley.
In the Reply Brief (filed May 9, 2006) the Appellants do not specifically
refer to any particular claim.
Thus, the status of the rejections of claims 18-24 and 43-45 under
35 U.S.C. § 102(b) as anticipated by Floyd, claims 42 and 47 under
35 U.S.C. § 103 as obvious over Floyd, and claim 46 under 35 U.S.C. § 103 as
obvious over Floyd in view of Turley is unclear.
We remand the application to the Examiner for the Examiner to clearly set
forth:
1) which claims are rejected,
2) the status of any non-rejected claims,
3) the statute section relied upon in rejecting each claim,
3
Appeal 2007-4053
Application 10/280,400
4) the reference or references relied upon in rejecting each claim, and
5) an explanation as to why each rejected claim is considered by the
Examiner to be unpatentable.

We also remand the application for the Appellants to respond on the record to the
Examiner’s explanation as to why each claim is rejected.
REMANDED

JRG

SCHLUMBERGER RESERVOIR COMPLETIONS
14910 AIRLINE ROAD
ROSHARON, TX 77583

4