Ex Parte TJOA

Board of Patent Appeals and Interferences

Feb 12, 2009

09319243 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PING LIONG TJOA
____________

Appeal 2008-5860
Application 09/319,243
Technology Center 3600
____________

Decided: February 12, 2009
____________

Before ANTON W. FETTING, DAVID B. WALKER, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 12 and 14-23. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). This appeal includes a record that is not ripe for review
pursuant to 37 C.F.R. § 41.50(a)(1) (2007). We therefore remand this
Appeal 2008-5860
Application 09/319,243

2
application to the Examiner to take appropriate action consistent with our
comments below. 37 C.F.R. §§ 41.35(b) and 41.50(a)(1) (2007).
This case was formerly remanded to the Examiner by the Board in a
decision mailed November 30, 2004 (Remand to the Examiner, Paper No.
33, Nov. 30, 2004). The former Decision remanded the case to the
Examiner to perform four actions:
(1) The examiner shall identify what the
differences are between the weight-training-
device-of Bosko and the subject matter of each of
the appealed claims, and in particular, independent
claim 12. In so doing, the examiner shall state
whether the limitations of claim 12 calling for the
claimed apparatus to have spherical end elements
of a diameter “adapted to the palm of the hand”
and a total length “approximately in the range of
the length of the shoulder span of the person using
it” are “obvious” in view of Bosko (as per the
rejection of Paper No. (15)) or “disclosed” (and
thus fully met) by Bosko (as per the answer).
(2) If the examiner determines that there are no
differences between the subject matter of any
appealed claim and Bosko, the examiner shall take
appropriate action (e.g., enter a rejection of that
claim under 35 U.S.C. § 102 as being anticipated
by Bosko), or explain why such action has not
been taken.
(3) The examiner shall state for the record which,
if any, of appellant's submissions accompanying
the main brief have been entered.
(4) With respect to any such submission entered,
the examiner shall fully treat the submission on the
record, explaining why the submission is or is not
sufficient to overcome the rejection(s).
Appeal 2008-5860
Application 09/319,243

(Remand to the Examiner, 4-5). The referenced submissions accompanying
the main brief were “two (2) executed Declarations under 37 CFR § 1.132, a
brochure relating to the claimed invention, and an additional exhibit also
relating to the claimed invention” (Remand to the Examiner, 3).
The Examiner reopened prosecution and addressed remand directions
(1) and (2) in a Non-Final Office Action dated September 13, 2005. The
Examiner did not respond to remand directions (3) and (4) in the Non-Final
Office Action. After further prosecution, the Appellant filed a Brief on
Appeal dated August 28, 2006, to which the Appellant attached a product
brochure and two Declarations under 37 C.F.R. § 1.132, one from Dr. Karl-
Michael Reinauer and the other from Barbara Michalski. These were the
same product brochure and Declarations referred to in remand directions (3)
and (4) above. The Appellant argues that
Applicant was not told in the Office Action of
February 27, 2006, what effect these declarations
had or why they were not effective.
. . . .
. . . To state that they were considered but
were dismissed because the “[t]he apparatus claim
limitations . . . are disclosed by Bosko is not
enough, and has little meaning with respect to a
103 rejection. The declarations are from
professionals that have used the training apparatus
and seen the positive results achieved. They
certainly show commercial success, and that is one
reason they were offered. If the examiner does not
agree, then applicant is entitled to know why.
(Br. 5-6). The Appellant also argues in the Reply Brief that
Two declarations under 37 CFR 1.132 were
submitted in this case. The Board in its remand to
the examiner, instructed the examiner to “. . . fully
Appeal 2008-5860
Application 09/319,243

treat the submission on the record, explaining why
the submission is or is not sufficient to overcome
the rejection(s),” (page 5 of the Board's remand
(Paper No.33). It is respectfully submitted that this
has not been done. That is, the examiner's
statement on page 7 of the Examiner's Answer that
“...the Examiner has given consideration to the
declarations…… the Examiner did not find that
the declarations helped to place the application in
condition for allowance.” Is not the treatment
intended by the Board.
Reference is made to MPEP 716, which
provides guidance on treating declarations under
37 CFR 1.132. Section 716 instructs the examiner,
if he/she does not believe that the declaration
overcomes the rejection(s) to state why. See page
700-286 of the MPEP. The examiner has not
followed the outlined procedure. The outcome
should be acceptance of the declarations and
withdrawal of the rejections.
(Reply Br. 3-4). The Appellant thus argues that the two declarations provide
evidence of commercial success that has not been properly addressed by the
Examiner.
We have reviewed all actions by the Examiner on the record since the
previous remand, and find the following statement by the Examiner in the
Answer relevant to remand directions (3) and (4) above:
The Appellant argues that the Examiner has not
given the declarations its due consideration. In
response, the Examiner has given consideration to
the declarations. Bosko disclosed the structural
limitations of the claimed invention. Thus, the
Examiner did not find that the declarations helped
to place the application in condition for allowance.
Appeal 2008-5860
Application 09/319,243

(Answer 7). The Examiner thus has not addressed the product brochure at
all and has not fully explained why the two Declarations, which appear to
have been entered and considered, are or are not sufficient to overcome the
rejections. This fails to comply with the Board’s direction in the former
Remand to fully treat on the record any of the submissions accompanying
the main Brief that have been entered, explaining why the submission is or is
not sufficient to overcome the rejection(s).
Accordingly, we remand the case to the Examiner to comply with
remand instructions (3) and (4) from the previous Remand to the Examiner.
Specifically, the Examiner shall state for the record whether the product
brochure submitted by the Appellant has been entered. Moreover, the
Examiner shall reconsider the obviousness of claims 17-21 over the cited
prior art, considering the extent to which the two Declarations and the
product brochure, if entered, provide evidence of secondary considerations
relevant to the nonobviousness of claims 1-65 as required by Graham v.
John Deere Co. Graham, 383 U.S. at 17-18. In each case, the Examiner
shall fully treat the submission on the record, explaining why the submission
is or is not sufficient to overcome the rejections.

ORDER
Accordingly, it is ORDERED that the application is remanded to the
Examiner:
1) to state for the record whether the product brochure submitted
by the Appellant has been entered;
2) to weigh the evidence submitted by Appellant as evidence of
secondary considerations of nonobviousness;
Appeal 2008-5860
Application 09/319,243

4) to reconsider the extent to which Bosko, Coallier, Jackson, and
other available prior art render obvious the subject matter of claims 17-21 in
light of the Appellant’s evidence of secondary considerations, fully treating
each entered submission on the record, and explaining why the submission is
or is not sufficient to overcome the rejections; and
5) for such further action as may be appropriate.

REMANDED

hh

BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA,VA 22314-1176