Appeal 2007-1681
Application 10/613,371
Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 5,
August 2006).
The record shows that included in the grounds of rejection set forth in
the Office Action was a ground of rejection of claim 2 under 35 U.S.C.
§ 112, first paragraph (Office Action 2-3).
Appellant did not request review of this ground of rejection or present
argument with respect thereto (Br. 4; cf. 8, arguing a ground of rejection of
claim 3 under 35 U.S.C. § 103(a) not set forth at 4).
The Examiner did not notify Appellant of this deficiency under
37 C.F.R. § 41.37(d) (2006). The Examiner states the “112 1st Paragraph
rejection of claim 2” has “not been withdrawn by the examiner, but . . . [is]
not under review on appeal because . . . [it has] not been presented for
review in the appellant’s brief” (Answer 4). In responding to Appellants’
arguments with respect to the ground of rejection of claim 2 under 35 U.S.C.
§ 103(a), the Examiner states “Appellants have not addressed the
interpretation given to claim 2, given the pending 112 1st Paragraph rejection
on the subject matter of the claim,” and presumes Appellant agrees with the
Examiner’s interpretation (id. 13-14).
37 C.F.R. § 41.37(c)(1)(vi) and (vii) (2005) provide that the Brief
must set forth a “statement of each ground of rejection presented for review”
and “[t]he contentions of appellant with respect to each ground of rejection
presented for review in paragraph (c)(1)(vi) of this section,” respectively.
See also MPEP § 1205.02 (8th ed., Rev. 3, August 2005). Where Appellant
does not present a ground of rejection for review in the Brief, the appeal is
considered to be withdrawn with respect to that ground and the “withdrawal
2
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