Appeal 2006-1502
Application 10/288,027
comply with the written description requirement in the Final Action mailed
October 19, 2004. The final action also included a rejection of claims 7 and
8 under 35 U.S.C. § 103(a). In the Advisory Action mailed January 25,
2005, the Examiner denied entry of the Amendment filed December 16,
2004, which would have amended claim 7.
The two Briefs filed February 24, 2005, and June 17, 2005,
respectively, set forth only the ground of rejection under 35 U.S.C. § 103(a)
under the heading “Grounds of rejection to be reviewed on appeal.” The
Examiner held these Briefs to be non-compliant in the Office
communications mailed June 10, 2005, and August 8, 2005, respectively.
The Examiner did not indicate that the Briefs did not include the ground of
rejection under 35 U.S.C. § 112, first paragraph, written description
requirement, under said heading or submit argument with respect to this
ground under the heading “Argument.” See 37 C.F.R. § 41.37(c)(1)(vi) and
(vii) (September 2004).
The Brief filed August 12, 2005, also addressed only the ground of
rejection under 35 U.S.C. § 103(a) under said headings (Br. 3-9). See 37
C.F.R. § 41.37(c)(1)(vi) and (vii) (2005).
The Examiner’s Answer mailed November 4, 2005, sets forth both
grounds of rejection and does not indicate that Appellant failed to request
review and present argument with respect to the ground of rejection under
35 U.S.C. § 112, first paragraph, written description requirement, in the
Brief filed August 12, 2005 (Answer 3 and 5). Indeed, the Examiner
erroneously states that “appellant’s statement of the grounds of rejection to
be reviewed on appeal is correct” (Answer 2).
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Last modified: November 3, 2007