Ex Parte Skeem et al

Board of Patent Appeals and Interferences

Apr 11, 2000

08892836 (B.P.A.I. Apr. 11, 2000)

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Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MARCUS R. SKEEM, SERGEJ-TOMISLAV BULJAN and
JEAN KRAMP
_______________
Appeal No. 2000-0207
Application 08/892,836
_______________
ORDER REMANDING TO EXAMINER
_______________
An Information Disclosure Statement (IDS) was filed July 5,
1997 (Paper No. 18). It is not apparent from the record that the
examiner properly considered the IDS submitted in accordance with
the criteria set forth in 37 CFR §§ 1.97 and 1.98.
Further, a first declaration (attached to Paper No. 11) and
a petition to change inventorship (Paper No. 14) were filed June
2, 1997. There is no indication in the record that either
submission has been considered by the examiner.
In addition, Amendment B filed June 2, 1997 (Paper No. 11)
was approved for entry by the examiner in his office action of
June 12, 1997 (Paper No. 13). The amendment remains unentered.
Appeal No. 2000-0207
Application 08/892,836
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The copy of Claim 28 as submitted in Appellants’ Brief and
indicated by the examiner to be a correct copy does not appear to
agree with the claim presented by appellants in their amendment
filed on June 2, 1997 in Paper No. 11. The first two lines of
part (c) should read as follows: “c) a first uppermost cutting
level comprising superabrasive gains and successive uppermost
cutting levels among the plurality of cutting levels of each
tooth;”.
Accordingly, it is
ORDERED that the application is remanded to the
Examiner for the following matters:
(1) consideration of the IDS (Paper No. 18) in accordance
with the pertinent rules;
(2) consideration of the Declaration (attached to
Paper No. 11);
(3) consideration of the petition to change inventorship
(Paper No. 14);
(4) appropriate entry of Amendment B (Paper No. 11);
(5) correction of the appendix of claims on appeal so as to
include a correct copy of appealed claim 28; and
(6) for such further action as may be appropriate.
Appeal No. 2000-0207
Application 08/892,836
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The examiner is required to notify the appellants in writing of
the steps taken to address the items listed above.
It is important that the Board of Patent Appeals and
Interferences be informed promptly of any action affecting the
appeal (i.e., abandonment, issue, reopening prosecution).
BOARD OF PATENT APPEALS
AND INTERFERENCES

__________________________________
Merrell C. Cashion, Jr.
Program and Resource Administrator
(703) 308-9797
Appeal No. 2000-0207
Application 08/892,836
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Mary E. Porter
Norton Company
1 New Bond Street
Box Number 15138
Worcester, MA 01615-0138
MCC:lab