Ex Parte Yatka et al

Board of Patent Appeals and Interferences

Jan 29, 2007

10712114 (B.P.A.I. Jan. 29, 2007)

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for publication and is not binding precedent of the Board.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 ROBERT J. YATKA,
DONALD J. TOWNSEND, SONYA S. JOHNSON,
MICHAEL J. GREENBERG, and DANIEL J. SITLER
______________

Appeal 2006-3009
Application 10/712,114
Technology Center 1700
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Decided: January 29, 2007
_______________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

ORDER VACATING ORAL HEARING
On January 10, 2007, Mr. Eric Hawthorne, a Lead Paralegal of the
Board of Patent Appeals and Interferences, informed appellants’ counsel,
Mr. Steven P. Shurtz, that the Merits Panel assigned to this application had
decided to remand the Application to the Examiner for further proceedings.
Appeal No. 2006-3009
Application 10/712,114
Mr. Hawthorne further informed Mr. Shurtz that therefore, the Oral Hearing
scheduled for January 11, 2007, will be vacated.
Accordingly, as counsel was informed on January 10, 2007, it is
ORDERED that the Oral Hearing scheduled for 1:00 PM on January 11,
2007, is VACATED.
ORDER REMANDING TO THE EXAMINER
We remand the application to the Examiner for consideration and
explanation of the issues raised by the record. 37 C.F.R. § 41.50(a)(1)
(2006); Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed.,
Rev. 5, August 2006).
The record shows that Appellants cite three non-patent literature
references in the Evidence Appendix and provide copies of these documents
in the Brief filed March 20, 2006 (Br., 14, “Appendix A,” “Appendix B,”
and “Appendix C”). Appellants do not state in the Evidence Appendix that
these references were previously made of record by the Examiner.
Appellants rely on these references in arguments (Br., e.g., 7-8 and 10).
The record further shows that Appellants appended the same
references and submitted arguments based thereon in the Amendment filed
February 6, 2006, in response to the Final Action mailed November 3, 2005.
The Examiner refused entry of this Amendment in the Advisory Action
mailed February 14, 2006.
37 C.F.R. § 41.37(c)(1)(ix) (2006) states in pertinent part:
An appendix containing . . . evidence entered by the examiner
and relied upon by appellant in the appeal, along with a
statement setting forth where in the record that evidence was
entered in the record by the examiner. Reference to unentered
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Appeal No. 2006-3009
Application 10/712,114
evidence is not permitted in the brief. See § 41.33 for treatment
of evidence submitted after appeal.
37 C.F.R. §41.33(d) (2006) states in pertinent part:
(d)(1) [E]vidence filed after the date of filing an appeal
pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of
filing a brief pursuant to § 41.37 may be admitted if the
examiner determines that the . . . evidence overcomes all
rejections under appeal and that a showing of good and
sufficient reasons why the affidavit or other evidence is
necessary and was not earlier presented has been made.
(2) All other . . . evidence filed after the date of filing an appeal
pursuant to § 41.31(a)(1) through (a)(3) will not be permitted
except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and
41.50(b)(1).
It is apparent that Appellants’ submission of and reliance on three
references in the Brief not previously made of record by the Examiner
violates the above rules. See MPEP § 1206 (8th ed., Rev. 5, August 2006).
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to notify
Appellants of the above deficiency in the Brief filed March 20, 2006, and
provide Appellants with the opportunity to cure the same as provided in
37 C.F.R. § 41.37(d) (2006); MPEP § 1205.03 (8th ed., Rev. 5, August
2006), with a view toward placing this application in condition for decision
on appeal with respect to the issues presented.
This Remand is not made for the purpose of directing the Examiner to
further consider the grounds of rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) (2006) does not apply.
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Appeal No. 2006-3009
Application 10/712,114
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.
REMANDED

clj

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