Appeal No. 2004-1766
Application 09/841,343
with independent claim 1 [sic, claim 10] for purposes of this appeal” (page 3). Appellant does
not acknowledge the ground of rejection under 35 U.S.C. § 103(a) in the brief.1
In the answer, the examiner states under “Issues” that the “statement of the issues in the
brief is substantially correct” with the change being that the ground of rejection is under § 102(e)
(answer, page 2), and under “Grouping of Claims” that the grouping in the brief is “not agreed
with” because claims 11, 12 and 25 “stand or fall together with independent claim 10” (pages
2-3).
In the answer, the examiner sets forth the grounds of rejection under § 102(e) and
§ 103(a) using the same language as in the final Office action (pages 3-4). The ground of
rejection under § 103(a) is not otherwise referred to in the answer.
In the reply brief, appellant does not refer to the ground of rejection under § 103(a).
We further do not find in the brief or the reply brief any statement that the arguments
presented therein with respect to certain claims rejected under § 102(e) is also appellant’s
position with respect to the rejection of other claims under § 103(a).
Under the provisions of 37 CFR § 1.192(c)(6) (2003), appellant must state the issues
presented for review, and under 37 CFR § 1.192(c)(8) (2003), appellant must state his
contentions and the basis therefor for each issue presented under § 1.192(c)(6).
37 CFR § 1.192(d) (2003) states in pertinent part: “If a brief is filed which does not
comply with all the requirements of paragraph (c) of this section, appellant will be notified of the
reasons for non-compliance and provided with a period of one month within which to file an
amended brief.”
It is clear from 37 CFR § 1.192(d) that appellant shall be notified by the examiner
whenever the brief does not comply with any of the requirements of 37 CFR § 1.192(c). This is
particularly the case where appellant has failed to respond to a ground of rejection by complying
with §§ 1.192(c)(6) and 1.192(c)(8)(iv) with respect thereto. Such action is necessary in order to
avoid dismissal of the appeal with respect to the claims subject to that ground of rejection, which
carries with it loss of the claims, for inadvertent non-compliance with the rule by appellant.
1 The appendix to the brief includes copies of claims 14 through 18 which were cancelled in the
amendment of November 6, 2002 (Paper No. 4, page 1).
- 2 -
Page: Previous 1 2 3 4 Next
Last modified: November 3, 2007