Appeal No. 2006-0802
Application 10/151,141
claim 22 with respect to the combined teachings of Kiecker and Burlando (pages 5-6, 15-19 and
26).
With respect to the remaining contents of the brief, we point out here that appeal is taken
from the action of the primary examiner twice rejecting claims of record. 35 U.S.C. § 134(a)
(2002); 37 CFR § 1.191(a)(1) (2004); MPEP §1205 (8th ed., Rev. 2, May 2004); see also 37
CFR § 41.31(a)(1) (September 2004); MPEP §1204 (8th ed., Rev. 3, August 2005). Thus,
claims proposed by an Applicant in unentered amendments are not before the Board on appeal,
and the matter of the non-entry of the amendments is petitionable and not appealable. See MPEP
§§ 706.01, 714.13, II. Entry Not A Matter Of Right, and 1201 (8th ed., Rev. 2, May 2004;
8th ed., Rev. 3, August 2005).
In the answer (pages 2-3), the Examiner does not address the Appellant’s statement under
“Status of Claims,” “Grouping of Claims,” and “Arguments” that he is only “appealing Claims
10, 18 and 22,” even in view of the statements with respect to the dependent claims set forth
under “Grouping of Claims” at the direction of the Examiner.
If the Appellant indeed intends to limit the appeal to independent claims 10, 18 and 22,
that is, to withdraw the appeal with respect to dependent claims 11 through 17, 19 through 21
and 23 through 25, the appeal will be dismissed as to claims 11 through 17, 19 through 21 and
23 through 25 with the consequent loss of these claims to the Appellant. See MPEP §1215.03
(8th ed., Rev. 2, May 2004; 8th ed., Rev. 3, August 2005).
The Examiner further does not address the Appellant’s statement of the “Issues” which
does not include the second ground of rejection of claim 10 under 35 U.S.C. § 103(a) or the
correct grounds of rejection of claim 22 under the same statutory provision, noting only that the
ground of rejection of certain dependent claims under 35 U.S.C. § 112, second paragraph, was
not accounted for (answer, page 2). See 37 CFR § 1.192(c)(6) (2004); MPEP §1206 (8th ed.,
Rev. 2, May 2004); see also 37 CFR § 41.37(c)(1)(vi) (September 2004); MPEP §1205.02
(8th ed., Rev. 3, August 2005). The Examiner further considers the dependent claims to be
grouped with the independent claims even though the Appellant does not so group the claims
under “Grouping of Claims.” See 37 CFR § 1.192(c)(7) (2004); MPEP §1206 (8th ed., Rev. 2,
May 2004); see also 37 CFR § 41.37(c)(1)(vii) (September 2004); MPEP §1205.02 (8th ed.,
Rev. 3, August 2005). The examiner further does not address that the second ground of rejection
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