Appeal No. 2001-1733 Page 3
Application No. 09/055,505
forth that a supplemental examiner’s answer is not permitted unless the examiner is
directed to enter a supplemental examiner’s answer upon remand by the Board.
On this record, appellants filed a Reply Brief in response to the Examiner’s
Answer. See Paper No. 21. However, instead of following the procedure expressly set
forth in 37 CFR § 1.193(b)(1) 2000, the examiner responded to the Reply Brief with a
Supplemental Examiner’s Answer. See Paper No. 22. This Supplemental Examiner’s
Answer was not permitted according to the rule and therefore amounts to a procedural
error.
We note that appellants’ Supplemental Reply Brief (page 1) requested
clarification as to whether the examiner reopened prosecution. In response, the
examiner states (Paper No. 24) that the Supplemental Examiner’s Answer was not
intended to reopen prosecution. Regardless of the examiner’s intent, the Supplemental
Examiner’s Answer effectively reopened prosecution on the merits in this application.
Accordingly, this application is not properly before this Panel for review.
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030,
1033 (Fed. Cir. 1997), “[f]or an appellate court to fulfill its role of judicial review, it must
have a clear understanding of the grounds for the decision being reviewed,” this
requires that “[n]ecessary findings … be expressed with sufficient particularity to enable
[the] court, without resort to speculation, to understand the reasoning of the Board, and
to determine whether it applied the law correctly and whether the evidence supported
the underlying and ultimate fact-findings.” Like the Court of Appeals in Gechter, this
board requires a clear understanding of the grounds for the decision being reviewed.
Therefore, to clarify the issues on this record, and to provide the examiner an
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007