Ex Parte Spoonamore

Board of Patent Appeals and Interferences

Apr 10, 2008

10641666 (B.P.A.I. Apr. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

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Ex parte Dr. Mark Spoonamore
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Appeal 2008-1305
Application 10/641,666

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ORDER REMANDING TO EXAMINER
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Dale M. Shaw, Chief Appeals Administrator

In the final rejection filed March 15, 2006, the examiner indicated that
claims 1, 2, 6-17, 20, and 21 were rejected and claims 18 and 19 were withdrawn.
In addition to the claims that were withdrawn, the applicant cancelled claim 5 in an
Amendment filed September 23, 20051.

1 In an After Final Amendment filed May 5, 2005, applicant cancelled claims 1, 2
and 5; and withdrew claims 7- 19.
Appeal 2008-1305
Application 10/641,666

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In the appeal brief filed April 2, 2007, withdrawn/cancelled claims 32, 18,
and 19 were mentioned in the brief in the following sections:
1. Status of Claims (pg. 3): indicates that Claims 12-21 are on Appeal.
Correction/clarification as to claims 18 & 19 is required.

2. Status of Amendments (pg. 4): again, Claims 18 & 19 were withdrawn
from consideration, but included in the statement:

"For purposes of expediting this Appeal, claims 12-21 are
offered for consideration".

3. Summary of Claimed Subject Matter (pg. 6): Independent claims 20 & 21
are not properly mapped to the specification.

4. Section VII (pg. 16) section entitled: 5. The Claims: discusses withdrawn
claim 18.

5. Conclusion (pg. 18) includes claim 18; and

6. Appendix of Claims: (pg. 20-21) includes withdrawn claims 18 & 19.

Also, discussion of cancelled/withdrawn claims 3, 18, and 19 are mentioned on
page 2 (2nd line from bottom) and on pages 8-9 of the appeal brief.
Correction/clarification is required.
In addition, the Grounds of Rejection (pg. 8) argues the rejections of claims
1-11; these claims are not on Appeal. Lastly, the Grounds of Rejection section

2 Claims 3 and 4 were cancelled in an Amendment filed December 7, 2005.
Appeal 2008-1305
Application 10/641,666

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does not present arguments of all claims that are on Appeal (Claims 12-17, and 20)
(pgs. 8-9). Please provide correction/clarification of the appeal status of all
claims.

In addition, a review of the file indicates that the appeal brief does not fully
comply with 37 C.F.R. § 41.37(c).
37 C.F.R. § 41.37(c) states in part:
(c)(1) The brief shall contain the following items under appropriate
headings and in the order indicated in paragraphs (c)(1)(i) through
(c)(1)(x) of this section, except that a brief filed by an appellant who
is not represented by a registered practitioner need only substantially
comply with paragraphs (c)(1)(i)
through (c)(1)(iv) and (c)(1)(vii) through (c)(1)(x) of this section:
(v) Summary of claimed subject matter. A concise explanation of the
subject matter defined in each of the independent claims involved in
the appeal, which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters. For each
independent claim involved in the appeal and for each dependent
claim argued separately under the provisions of paragraph (c)(1)(vii)
of this section, every means plus function and step plus function as
permitted by 35 U.S.C. 112, sixth paragraph, must be identified 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.

Appeal 2008-1305
Application 10/641,666

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A review of the file reveals that the Summary of Claimed Subject Matter
section of the appeal brief filed March 15, 2006 is defective. The explanation of
independent claims 20 and 21 does not refer to page and line number in the
specification and/or reference characters to the drawings. See MPEP § 1205.
Correction is required.
Accordingly, it is
ORDERED that this application be returned to the examiner to: 1)
hold the appeal brief of March 15, 2006 defective; 2) request appellants to file a
supplemental appeal brief for clarification and correction of the appropriate claims
involved only in the appeal; 3) and in compliance with 37 C.F.R. § 41.37 (c)(1)(v);
and 4) for such further action as may be appropriate. If there are any questions
regarding this remand, please contact the Board of Patent Appeals and
Interferences at 571-272-9797

BOARD OF PATENT APPEALS
AND INTERFERENCES

Appeal 2008-1305
Application 10/641,666

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cc: GREENBERG TRAURIG LLP (LA)
INTELLECTUAL PROPERTY DEPARTMENT
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SUITE 400E
SANTA MONICA, CA 90404

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