Ex Parte Van Dyke

Board of Patent Appeals and Interferences

Jul 17, 2000

07660807 (B.P.A.I. Jul. 17, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KNOX VAN DYKE
__________
Appeal No. 1995-2698
Application 07/660,807
__________
ON BRIEF
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Before Winters, William F. Smith, and Scheiner, Administrative Patent Judges.
William F. Smith, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1 through 12, 18 through 20, 26, and 29 through 36, all the claims remaining in
the application.
Our review of this case resulted in the discovery of a number of
procedural errors on the part of the examiner which would normally preclude us
from reaching a decision on the merits. However, our review has also led to the
discovery of a particularly egregious substantive error on the part of the
examiner. As a consequence, we will only outline the procedural errors we have
uncovered and proceed to a decision on the merits.
Procedural Errors
Statements of Rejections
There are two rejections under 35 U.S.C. § 103 set forth in the Examiner’s
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Answer. The first rejection (Examiner’s Answer, pages 4-7) appeared in the final
rejection. The second rejection (Examiner’s Answer, pages 7-10) is a new
ground of rejection made in the Examiner’s Answer. The heading for the first
rejection reads as follows:
Claims 1-12, 18-20, 26 and 29-36 are rejected under 35 U.S.C. 103 as
being unpatentable over Miana et al, Fournet et al (R and S newly cited) and
Ferrer Int SA in view of Mitscher et al, Neal et al (newly cited) and Applicants
acknowledgement all of record or newly cited.
The heading for the new ground of rejection reads as follows:
Claims 1-12, 18-20, 26 and 29-36 are rejected under 35 U.S.C. 103 as
being unpatentable over Fournet et al. (R and S newly cited, references
underlying the original Chemical Abstracts) in view of Neal et al, Riou et al
(newly cited), Applicants acknowledgement and Mitscher et al, all of
record or newly cited.

The references underlying Fournet et al (R and S) are provided to clarify
the rejection. Additionally, several references causing confusion as to the
Examiners position have been replaced with Riou et al. Rational [sic] used
in the rejection under 35 USC 103 is unchanged, but reformulated here to
simplify the issues and expedite prosecution.
At the time of the final rejection, the Fournet references relied upon by the
examiner appear to be citations from Chemical Abstracts. Attached to a
“Supplemental Brief on Appeal” (Paper No. 20, September 27, 1993), are copies
of the translated full text Fournet articles. It is not clear what the examiner
means by the phrase “(R and S newly cited)” in describing the Fournet
references in the first ground of rejection since it appears that the examiner
relies upon the full text translations in the new ground of rejection in the
Examiner’s Answer. Thus, it is not clear what Fournet references are “newly
cited” in regard to the first ground of rejection. The same confusion exists to the
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Application 07/660,807
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examiner’s citation of Neal in the first ground of rejection as being “newly cited.”
In relying upon Neal in the new ground of rejection, the examiner does not
characterize Neal as “newly cited.” Furthermore, the examiner’s statement in
regard to both rejections that reliance is placed upon “Applicants [sic]
acknowledgement all of record or newly cited” is not understood. Is the
examiner only relying upon so-called acknowledgements previously referenced
during the examination process or is the examiner is relying upon additional
“acknowledgements” for the first time in the Examiner’s Answer?
There is further confusion in this record as to the references relied upon
by the examiner. The first rejection relies upon a reference to Mitscher et al. As
set forth on page 2 of the Examiner’s Answer, this appears to be yet another
Chemical Abstracts citation. However, there is a copy of the full text Mitscher
article of record. Thus, it is not clear whether the examiner’s consideration of the
issues raised in the rejections has been based upon the abstract or the full text
article.
It is not clear why the examiner did not withdraw the original rejection in
view of the new ground of rejection. Suffice it to say that the examiner did not
accomplish his stated goal of simplifying the issues and expediting prosecution
by making the new ground of rejection.
Response to Reply Brief
Appellant filed a substantive response to the new ground of rejection by
way of the Reply Brief of November 4, 1993 (Paper No. 21). The examiner
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issued a communication on December 28, 1993 (Paper No. 22) stating that the
Reply Brief had been entered and considered but no further response by the
examiner was deemed necessary. This was error on the examiner’s part.
Under the then existing provisions of MPEP § 1208.04, the examiner was
to issue a Supplemental Examiner’s Answer indicating whether the new ground
of rejection had been overcome, and if not, setting forth the examiner’s position
in response. Absent a substantive response of the Reply Brief from the
examiner, neither appellant nor this merits panel is in a position to determine
what the examiner’s position is.
Substantive Error
In arguing the existing rejection under 35 U.S.C. § 103 in the Appeal Brief,
appellant relied upon the declaration of appellant Dr. Knox Van Dyke filed under
37 CFR § 1.132 as evidence of nonobviousness. See pages 13-14 of the
Appeal Brief. The examiner did not mention or respond to this portion of
appellant’s position in the Examiner’s Answer. Appellant made note of this
shortcoming of the Examiner’s Answer in the Reply Brief stating at page 7 that
“the examiner does not even address this evidence in his [answer].” As set forth
above, the examiner has not filed a substantive response to the Reply Brief.
As this record now stands, appellant relies upon objective evidence of
nonobviousness in support of his position on appeal. Neither the Examiner’s
Answer nor the response to the Reply Brief addresses this evidence. This is
legal error on the part of the examiner. As set forth in In re Hedges, 783 F.2d
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1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
Here, the examiner has not properly discharged his responsibilities in evaluating
appellant’s evidence of nonobviousness. This board serves a board of review.
35 U.S.C. § 6(b). Without a substantative response to appellant’s evidence of
nonobviousness, the examiner’s position is not amenable to review. As a
consequence, we will reverse the two pending rejections under 35 U.S.C. § 103.
The decision of the examiner is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Toni R. Scheiner )
Administrative Patent Judge )
Price, Heneveld, Cooper, De Witt & Litton
695 Kenmoor, S.E.
P.O. Box 2567
Grand Rapids, MI 49501
Appeal No. 1995-2698
Application 07/660,807
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WFS/cam