Ex Parte Weaver

Board of Patent Appeals and Interferences

Jun 16, 2006

09838866 (B.P.A.I. Jun. 16, 2006)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SAMUEL C. WEAVER
_____________

Appeal No. 2006-1321
Application No. 09/838,866
______________

ON BRIEF
_______________

Before FRANKFORT, OWENS and LEVY, Administrative Patent Judges.

FRANKFORT, Administrative Patent Judge.

REMAND TO THE EXAMINER

The above identified application is being remanded to the
examiner under the authority of 37 CFR § 41.50(a)(1) for
appropriate action with regard to the items listed below.

In the final rejection mailed November 21, 2003 claims 1
through 16 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eom et al. (U.S. Patent No. 5,344,608) in view
of Weaver (U.S. Patent No. 5,573,607). The Notice of Appeal filed
May 19, 2004 indicates appellant’s intention to appeal from the
examiner’s final rejection of claims 1 through 16.
Appeal No. 2006-1321
Application No. 09/838,866

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However, in the brief filed July 19, 2004 appellant indicates on
page 2 that “Claims 1 through 14 are being appealed” and
specifically requests that “Claims 15 and 16 be withdrawn from
further consideration.”

Notwithstanding the foregoing, in the examiner’s answer
mailed October 7, 2004 the examiner continues to maintain the
rejection of claims 1-16 under 35 U.S.C. § 103(a). Making no
comment whatsoever regarding appellant’s request that claims 15
and 16 be withdrawn from further consideration. In responses
filed subsequent to the examiner’s answer, it appears that
appellant is again seeking allowance of claims 1 through 16 (see
page 12 of the reply brief filed November 12, 2004 and pages 1
and 9 of the reply brief filed June 6, 2005). Thus, we are at
somewhat of a loss concerning the actual status of claims 15 and
16 in the present application. Accordingly, we remand the
application to the examiner to clarify the status of claims 15
and 16. It appears that the examiner, in response to the brief
filed July 19, 2004, should have withdrawn claims 15 and 16 from
further consideration and dismissed the appeal as to those
claims.

Appeal No. 2006-1321
Application No. 09/838,866

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Another area of concern is the apparent failure of the
examiner to specifically treat or otherwise comment on the
declarations of Samuel C. Weaver filed on January 13, 2003 and
August 21, 2003. Although the appellant repeatedly relies on the
Weaver declarations to support arguments made in the brief and
also in the reply briefs, the examiner has not once mentioned
those declarations in the answer or provided any meaningful
analysis and response for the facts and conclusions set forth
therein. More particularly, we note that the examiner has not
meaningfully responded to the arguments in the briefs and
assertions in the declarations concerning the art recognized
distinction between “metal alloys” and “metal matrix composite”
materials, or appellant’s assertions regarding unexpected and
significant results achieved by the claimed invention. Therefore,
we also remand for the examiner to fully treat the declarations.

As we indicated above, appellant has filed two reply briefs
in the present application (November 12, 2004 and June 6, 2005).
In each instance the examiner’s response to the filing of the
reply brief was to send a paper stating merely that the reply
brief had been “noted.” As set forth in 37 CFR § 41.43 in a
proper response the primary examiner “must acknowledge receipt
Appeal No. 2006-1321
Application No. 09/838,866

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and entry” of the reply brief or pursue other actions noted in
the rule. Since the examiner has not complied with the
requirements of the rule, we remand for clarification concerning
the status of the two reply briefs and a clear indication on the
record as to whether the reply briefs were actually entered and
considered. Moreover, we request that the examiner provide a
response on the record to the arguments advanced by appellant in
the reply briefs.

Another issue to consider on remand is whether the
examiner’s answer contains a new ground of rejection and
therefore requires approval by a Technology Center (TC) Director
or designee (MPEP § 1207.03). Regarding this aspect of the
remand, we direct attention to the reply brief filed November 12,
2004 (page 10) and appellant’s comment therein that a ground of
rejection specifically disclaimed in the final rejection is now
being maintained in the examiner’s answer.

Assuming that a supplemental examiner's answer clarifying
the issues discussed above will be necessary in response to this
remand, it follows that appellant may exercise one of the options
set forth in 37 CFR § 41.50(a)(2).

Appeal No. 2006-1321
Application No. 09/838,866

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This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (item D), Eighth
Edition, Rev. 3, August 2005.

REMAND TO THE EXAMINER

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

CEF/vsh

Appeal No. 2006-1321
Application No. 09/838,866

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