Appeal No. 2006-0419
Application 09/798,672
The statement of the “Status of Claims” in the brief includes claim 24 (page 3) as does
the Notice of Appeal filed November 2, 2004. However, appellants do not include in the brief
either of the above grounds of rejection under “Grounds of Rejection to be Reviewed on Appeal”
(pages 4-5), but state that “[t]he patentability of claim 24 stands or falls with the patentability of
claim 19” under “Grouping of Claims” (page 5)
The examiner erroneously states that appellants’ “statement of the grounds of rejection is
correct” (answer, page 2), and does not otherwise point out the deficiency in the brief with
respect to the grounds of rejection of claim 24.
37 CFR § 41.37(c)(1)(vi) and (vii) (September 2004) provide that the appeal brief must
set forth a “statement of each ground of rejection presented for review” and “[t]he contentions of
appellant with respect to each ground of rejection presented for review in paragraph (c)(1)(vi) of
this section,” respectively. See also MPEP § 1205.02 (8th ed., Rev. 3, August 2005;
1200-14 – 1200-15). Where appellants do not present a ground of rejection for review in the
brief, the appeal is considered to be withdrawn with respect to that ground and the “withdrawal
is treated as an authorization to cancel the withdrawn claims.” MPEP §§ 1214.05 and 1215.03
(8th ed., Rev. 3, August 2005).
37 CFR § 41.37(d) (September 2004) provides that appellants will be notified of any
deficiency in the brief under the rules and provided with the opportunity to correct the
deficiency. See MPEP § 1205.03 (8th ed., Rev. 3, August 2005).
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to notify appellants of the deficiency in the brief with respect
to the ground of rejection of appealed claim 24 under 35 U.S.C. § 103(a) that we have discussed
above and provide appellants with the opportunity to cure the same in order to avoid withdrawal
of the appeal and its consequences with respect to this claim, with a view toward placing this
application in condition for decision on appeal with respect to the issues presented.
This remand is not made for the purpose of directing the examiner to further consider a
ground of rejection. Accordingly, 37 CFR § 41.50(a)(2) (2005) does not apply.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
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