10955507 (B.P.A.I. Feb. 5, 2008)

Ex Parte Swain

Board of Patent Appeals and InterferencesFeb 5, 2008

10955507 (B.P.A.I. Feb. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM HALL SWAIN ____________ Appeal 2007-3100 Application 10/955,507 Technology Center 2800 ____________ Decided: February 5, 2008 ____________ Before ANITA PELLMAN GROSS, JOHN A. JEFFERY, and CARLA M. KRIVAK, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. ORDER REMAND TO THE EXAMINER The present application is remanded to the Examiner under 37 C.F.R. § 41.50 to clarify the evidentiary support that forms the basis for the on-sale bar rejections under 35 U.S.C. § 102(b) (Ans. 7). This application is a divisional of Application Serial Number 08/579,395 (“the ‘395 application”). The present application is directed to a method of making a more accurate sensor with implement that includes, among other things, an error reducing form of the implement that is fitted to Appeal 2007-3100 Application 10/955,507 2 drive an operating parameter of magnitude Q and hold it to a constant value. See, e.g., Figure 7 of the present application. The ‘395 application is directed to, among other things, selectively modulating the operating parameter to different magnitudes. See, e.g., Figure 9 of the ‘395 application. The Examiner has rejected present claim 5 under 35 U.S.C. § 102(b) over two flyers pertaining to Magnetic Error Reduction (MER) and Magnetic Error Correction (MEC) meters (Ans. 7). Although the relative dates of the flyers, the present application, and the ‘395 application have been fully discussed, the subject matter of the two flyers has not been specifically explained as to how each pertains to the inventions claimed in (1) the present application, and (2) the ‘395 application. Although the flyers for the respective MER and MEC meters generally describe their functions, uses, and advantages, the flyers are silent as to exactly how they work. In rejecting the claims under § 102(b), the Examiner has apparently presumed that both MEC and MER meters utilize the functionality recited in claim 5 including, among other things, holding the magnitude Q of the operating parameter at a constant value. However, we find that it is unclear on the record before us whether either the MER or MEC meter, in fact, utilizes the functionality of claim 5. Based on the record before us, we cannot say whether the MEC and/or the MER meters hold the magnitude Q of the operating parameter at a constant value (e.g., using a circuit commensurate with that shown in Figure 7 of the present application). Nor can we say whether these meters utilize functionality that switches the magnitude of the operating parameter (e.g., using a circuit commensurate with that shown in Figure 9 of the ‘395 Appeal 2007-3100 Application 10/955,507 3 application). Based on the scant descriptions provided by these flyers, these meters may well perform both of these functions -- we simply cannot tell. Since the record is unclear regarding the relationship between the MEC and MER meters with respect to the subject matter of claim 5, any meaningful determination regarding whether the admitted commercial activity involving these meters constitutes an on-sale bar under § 102 would therefore be premature until the record is more fully developed in this regard. Accordingly, we remand the application to the Examiner to further develop the record in connection with the MER and MEC meters as they pertain to the subject matter of claim 5 of the present application. Since Appellant is in the best position to explain such a relationship, the Examiner must inquire as to whether the MEC and MER meters utilize functionality recited in claim 5 including, among other things, holding the value of the magnitude Q of the operating parameter at a constant value. For such an inquiry, we refer the Examiner to Requirements for Information under 37 C.F.R. § 1.105. See MPEP §§ 704.10-14. If possible, Appellant should provide corroborating evidence to support any statements made in connection with the Examiner’s inquiry. The present application on appeal is remanded to the Examiner for appropriate action in accordance with the foregoing instructions. Appeal 2007-3100 Application 10/955,507 4 Because this application has a “special” status, it requires immediate action. See MPEP § 708.01(D). The Board must be informed promptly of any action affecting the appeal in this case. REMANDED KIS William H. Swain 4662 Gleason Ave. Sarasota, FL 34242