Ex Parte Reuning

Board of Patent Appeals and Interferences

Jan 26, 2006

09897826 (B.P.A.I. Jan. 26, 2006)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte STEPHEN MICHAEL REUNING
_______________

Appeal No. 2004-1714
Application No. 09/897,826
_______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and NAPPI, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
ORDER TO VACATE DECISION
AND
ORDER TO DISMISS APPEAL
In a decision dated September 30, 2004, the Board affirmed
the 35 U.S.C. § 102(e) rejection of claims 1 through 19 based
upon the teachings of the patent to McGovern. In response to a
October 21, 2005 request for rehearing, the Board informed
appellant on November 30, 2005 that the request for rehearing had
been granted to the extent that our decision had been
reconsidered, but that such request was denied with respect to
making any modifications to the decision. Prior to the November
30, 2005 mailing date of our response to the request for
Appeal No. 2004-1714
Application No. 09/897,826
2
rehearing, counsel for appellant filed on November 7, 2005, among
other documents, a Request for Continued Examination (RCE) under
37 CFR § 1.114.
According to the notice entitled “Request for Continued
Examination Practice and Changes to Provisional Application
Practice,” 65 Fed. Reg. 50092, 50095 (Aug. 16, 2000) and the
provisions of 37 CFR § 1.114(d), a request for continued
examination under 37 CFR § 1.114 filed after appeal has been
taken, but prior to a decision on the appeal, “will be treated as
a request to withdraw the appeal and to reopen prosecution of the
application before the examiner.” Inasmuch as the November 7,
2005 filing date of the RCE is prior to our November 30, 2005
response to the request for rehearing, we hereby find that the
Board did not make a proper final “decision on the appeal,” and
that the RCE is a proper “request to withdraw the appeal and to
reopen prosecution of the application before the examiner.”
Accordingly, our premature decision in this application is
vacated, and the appeal in this application is dismissed in favor
of the RCE.
The application is being returned to the examiner for any
further action as may be appropriate.
Appeal No. 2004-1714
Application No. 09/897,826
3
ORDER TO VACATE DECISION
AND
ORDER TO DISMISS APPEAL
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

KWH/kis
Appeal No. 2004-1714
Application No. 09/897,826
4
PHARMACEUTICAL PATENT ATTORNEY, L.L.C.
55 MADISON AVENUE
4 FLOORTH
MORRISTOWN, NJ 07960-7397