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for publication and is not binding precedent of the Board.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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