Ex Parte Xiao

Patent Trial and Appeal Board

Jul 8, 2016

12028199 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/028,199 02/08/2008 Hong Xiao
28410 7590 07112/2016
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
6666.160 6264
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/12/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto.filings@bw-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY KOHANIM and
ELLIOT JEB HABER
Appeal2014-001718
Application 12/018, 199
Technology Center 3600
Before BRADLEY R. GARRIS, GEORGE C. BEST, and KIMBERLY
McGRAW, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DISMISSAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19 and 21. 1 The Examiner's Answer, however, included new
grounds of rejection of claims 1-19 and 21. Ans. 4--7. We have jurisdiction
under 35 U.S.C. § 6(b ).
Because Appellants have not responded to the new grounds of
rejection under 37 C.F.R. § 41.39(b), we dismiss the appeal.
1 Claim 20 has been withdrawn from consideration. Final Act. 2.
Appellants state that claim 20 was cancelled in a Request for
Reconsideration filed January 16, 2013. App. Br. 2. However, the
amendments proposed in the Request for Reconsideration were not entered
by the Examiner. Advisory Action (January 31, 2013).
Appeal2014-001718
Application 12/028, 199
FINDINGS
1. On November 20, 2012, the Examiner entered a Final Rejection
of claims 1-19 and 21under35 U.S.C. § 103(a) as unpatentable over
Wheeler (US 6,110,985, issued Aug. 29, 2000) in view of Chino (US
2006/0199917 Al, published Sept. 7, 2006). Final Act. 2--4.
2. On January 16, 2013, Appellants filed Request for
Reconsideration and sought to cancel claim 20.
3. On January 23, 2013, the Examiner initialed the Request for
Reconsideration indicating that the request to cancel claim 20 would not be
entered.
4. On January 31, 2013, the Examiner issued an Advisory Action
and mailed the initialed Request for Reconsideration.
5. On February 20, 2013, Appellants timely filed a Notice of
Appeal.
6. On September 5, 2013, the Examiner issued an Examiner's
Answer.
7. In the Answer, the Examiner maintained the 35 U.S.C.
§ 103 rejection of all the claims and added new grounds of rejection
rejecting claims 1-19 and 21under35 U.S.C. § 103(a) over JP 07-053825
("Kuroda") and Wheeler (US 6,110,985). Ans. 4--9.
8. In the Answer, the Examiner states that) in order to avoid sua
sponte dismissal of the appeal "as to the claims subject to the ne\v ground of
rejection," Appellants "must within T\VO NlONTHS from the date of this
answer~' respond either by (l) reopening prosecution by filing a reply
under 37 C.F.R. § 1.111 or by (2) maintaining appeal by filing a reply brief
as set forth in 37 C.F.R. § 41 AL A . i1s. 10.
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Appeal2014-001718
Application 12/028, 199
9. The two-month time period to respond to the new grounds of
rejection expired November 5) 2013.
10. A review of the electronic file wrapper indicates that Appellants
have not filed a reply to the new ground of rejection.
DISCUSSION
As indicated above, Appellants failed to timely respond to the new
grounds of rejection of claims 1-19 and 21 set forth in the Examiner's
Answer. Accordingly, the appeal is dismissed.
Notably, the Examiner prominently identified the new grounds of
rejection. Ans. 4. The Technology Center Director Designee approved the
new ground of rejection in accordance with standard procedure. Ans. 11.
The Examiner also unambiguously explained that Appellants must, within
two months of the mailing date of the Answer, exercise one of two
regulatory options to avoid sua sponte dismissal of the appeal as to the
claims subject to the new grounds of rejection (i.e., claims 1-19 and 21).
Ans. 4--7. As the Examiner indicated, Appellants' regulatory options were
to: (1) reopen prosecution by filing a reply under 37 C.FR. § 111, or (2)
maintain the appeal by filing a Reply Brief as set forth in 37 C.F.R. § 41.41.
See 37 C.F.R. § 41.39(b).
Appellants, however, did not respond to the Answer at all, let alone
select one of the regulatory options as mandated. That failure to respond is,
therefore, fatal to this appeal under 37 C.F.R. § 41.39(b).
Thus, we dismiss the appeal as to claims 1-19 and 21 which are
subject to new grounds of rejection under 35 U.S.C. § 103. The application
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Appeal2014-001718
Application 12/028, 199
is being returned to the Examiner for further action as may be appropriate.
See MPEP §§ 1207.03(c)(III), 1215.
SUMMARY
We find that Appellants failed to avoid sua sponte dismissal of the
appeal as to claims 1-19 and 21, which are the claims subject to the new
grounds of rejection under 35 U.S.C. § 103(a). See 37 C.F.R. § 41.39(b).
The appeal is dismissed.
DISMISSED
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