Ex Parte Varela

Board of Patent Appeals and Interferences

Aug 12, 2004

09841343 (B.P.A.I. Aug. 12, 2004)

The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte TOMAZ DOPICO VARELA
______________

Appeal No. 2004-1766
Application 09/841,343
_______________

ON BRIEF
_______________

Before GARRIS, WARREN and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
REMAND TO THE EXAMINER
We remand the application to the examiner for consideration and explanation of issues
raised by the record. 37 CFR §1.196(a) (2003); Manual of Patent Examining Procedure (MPEP)
§ 1211 (8th ed., Rev. 2, May 2004; 1200-29 – 1200-30).
The record shows that in the final Office action mailed June 12, 2003 (Paper No. 7), the
examiner maintained two grounds of rejection: claims 1, 10 and 20 through 25 under 35 U.S.C.
§ 102(e) as anticipated by Lie; and claims 2 through 9, 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Lie as applied to claim 1 above, and further in view of Manning (pages 2-3).
In the brief, appellant states under “Issues” and argues only the ground of rejection of
claims 1, 10 and 20 through 25 under “35 U.S.C. § 102(b) [sic, 35 U.S.C. § 102(e)]” (pages 3-5),
and under “Grouping Of Claims,” that, inter alia, claims 2 through 9 “stand or fall together with
independent claim 1 for purposes of this appeal,” and claims 11 and 12 “stand or fall together
Appeal No. 2004-1766
Application 09/841,343
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with independent claim 1 [sic, claim 10] for purposes of this appeal” (page 3). Appellant does
not acknowledge the ground of rejection under 35 U.S.C. § 103(a) in the brief.1
In the answer, the examiner states under “Issues” that the “statement of the issues in the
brief is substantially correct” with the change being that the ground of rejection is under § 102(e)
(answer, page 2), and under “Grouping of Claims” that the grouping in the brief is “not agreed
with” because claims 11, 12 and 25 “stand or fall together with independent claim 10” (pages
2-3).
In the answer, the examiner sets forth the grounds of rejection under § 102(e) and
§ 103(a) using the same language as in the final Office action (pages 3-4). The ground of
rejection under § 103(a) is not otherwise referred to in the answer.
In the reply brief, appellant does not refer to the ground of rejection under § 103(a).
We further do not find in the brief or the reply brief any statement that the arguments
presented therein with respect to certain claims rejected under § 102(e) is also appellant’s
position with respect to the rejection of other claims under § 103(a).
Under the provisions of 37 CFR § 1.192(c)(6) (2003), appellant must state the issues
presented for review, and under 37 CFR § 1.192(c)(8) (2003), appellant must state his
contentions and the basis therefor for each issue presented under § 1.192(c)(6).
37 CFR § 1.192(d) (2003) states in pertinent part: “If a brief is filed which does not
comply with all the requirements of paragraph (c) of this section, appellant will be notified of the
reasons for non-compliance and provided with a period of one month within which to file an
amended brief.”
It is clear from 37 CFR § 1.192(d) that appellant shall be notified by the examiner
whenever the brief does not comply with any of the requirements of 37 CFR § 1.192(c). This is
particularly the case where appellant has failed to respond to a ground of rejection by complying
with §§ 1.192(c)(6) and 1.192(c)(8)(iv) with respect thereto. Such action is necessary in order to
avoid dismissal of the appeal with respect to the claims subject to that ground of rejection, which
carries with it loss of the claims, for inadvertent non-compliance with the rule by appellant.

1 The appendix to the brief includes copies of claims 14 through 18 which were cancelled in the
amendment of November 6, 2002 (Paper No. 4, page 1).
Appeal No. 2004-1766
Application 09/841,343
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MPEP §§ 1206 and 1215.04 (8th ed., Rev. 2, May 2004; 1200-8 – 1200-09 and 1200-12;
1200-40 – 1200-41).
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to notify appellant of non-compliance with the rules in the
failure to address the ground of rejection under 35 U.S.C. § 103(a) in the brief as required there
under, with a view toward placing this application in condition for decision on appeal with
respect to the issues presented.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
This application, by virtue of its “special” status, requires immediate action. See MPEP
§ 708.01(D) (8th ed., Rev. 2, May 2004; 700-127). It is important that the Board of Patent
Appeals and Interferences be informed promptly of any action affecting the appeal in this case.
See, e.g., MPEP§ 1211 (8th ed., Rev. 2, May 2004; 1200-30).
Remanded

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

Appeal No. 2004-1766
Application 09/841,343
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