Ex Parte HOLTON et al - Page 1



                                    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                                              for publication and is not binding precedent of the Board.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. 19                              

                                 UNITED STATES PATENT AND TRADEMARK OFFICE                                                                                   
                                                                     __________                                                                              

                                        BEFORE THE BOARD OF PATENT APPEALS                                                                                   
                                                          AND INTERFERENCES                                                                                  
                                                                     __________                                                                              

                                             Ex parte ROBERT A. HOLTON, SUHAN TANG,                                                                          
                                                   FENG LIANG and CARMEN SOMOZA                                                                              
                                                                     __________                                                                              

                                                               Appeal No. 2000-1294                                                                          
                                                           Application No. 08/850,924                                                                        
                                                                     __________                                                                              

                                                                       ON BRIEF                                                                              
                                                                     __________                                                                              

                       Before WINTERS, WILLIAM F. SMITH and ADAMS, Administrative Patent                                                                     
                       Judges.                                                                                                                               

                       ADAMS, Administrative Patent Judge.                                                                                                   

                                                             DECISION ON APPEAL                                                                              

                                This is a decision on the appeal under 35 U.S.C. § 134 from the                                                              
                       examiner’s final rejection of claims 2-9, 11-15, 17, 18, 20-37 and 401.  The only                                                     

                       remaining claims, claims 19 and 39, were indicated by the examiner as allowed.                                                        


                                                                                                                                                             
                       1 We note that two consecutive Final Office Actions (Paper No. 11, mailed March 24, 1999 and Paper No.                                
                       12, mailed June 3, 1999) are present in the administrative file.  While they were mailed less than three                              
                       months apart, there is no statement on the record as to why a second Final Office Action was mailed in the                            
                       absence of a response from appellants.  Upon review of the two Office Actions, we note that they introduce                            
                       a significant amount of confusion, into the record, with regard to which claims are indicated as allowed.  The                        
                       first (Paper No. 11) indicates that claims 39 and 40 are allowed.  See pages 1 and 3.  The second Final                               
                       Office Action (Paper No. 12) indicates that claim 39 is allowed.  See page 1.  However, this same Action                              
                       also indicates that both claims 39 and 40 are allowed.  See page 4.  In addition, while claim 40 is included                          
                       in the listing of claims under rejection (see Paper No. 12, page 1), claim 40 is not included in the statement                        
                       of the rejection at page 2.  Notwithstanding the examiner’s confusion, it appears that appellants correctly                           
                       interpreted the examiner’s intention (see Brief, page 1) finding “[t]his is an appeal from the final rejection of                     
                       pending claims 2-9, 11-15, 17-37 and 40.  Claim 39 was allowed.”  Nevertheless, while appellant did not                               
                       separately argue any claim, the examiner finds (Answer, page 2) appellants’ statement of the status of the                            
                       claims incorrect finding instead (Answer, page 2) that “this appeal involves claims 2-9, 11-15, 17-18, 20-37                          
                       and 40.  Claim 19 is now allowed and 39 was allowed.”  We believe the status of the claims is correctly                               
                       reproduced above.  Given our disposition, any error in correctly reciting the claims under rejection is                               
                       harmless.                                                                                                                             






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