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today was not written for publication and is not binding
precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOMAZ DOPICO VARELA
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Appeal No. 2004-1766
Application 09/841,343
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ON BRIEF
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Before GARRIS, WARREN and DELMENDO, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
REMAND TO THE EXAMINER
We remand the application to the examiner for consideration and explanation of issues
raised by the record. 37 CFR §1.196(a) (2003); Manual of Patent Examining Procedure (MPEP)
§ 1211 (8th ed., Rev. 2, May 2004; 1200-29 – 1200-30).
The record shows that in the final Office action mailed June 12, 2003 (Paper No. 7), the
examiner maintained two grounds of rejection: claims 1, 10 and 20 through 25 under 35 U.S.C.
§ 102(e) as anticipated by Lie; and claims 2 through 9, 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Lie as applied to claim 1 above, and further in view of Manning (pages 2-3).
In the brief, appellant states under “Issues” and argues only the ground of rejection of
claims 1, 10 and 20 through 25 under “35 U.S.C. § 102(b) [sic, 35 U.S.C. § 102(e)]” (pages 3-5),
and under “Grouping Of Claims,” that, inter alia, claims 2 through 9 “stand or fall together with
independent claim 1 for purposes of this appeal,” and claims 11 and 12 “stand or fall together
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