Ex Parte Masuda et al - Page 2


               Appeal No. 2006-1580                                                                                                
               Application 10/112,743                                                                                              

               under “Grounds of Rejection To Be Reviewed On Appeal” (brief, page 7; reply brief, page 3)                          
               and do not specifically argue the ground of rejection under 35 U.S.C. § 103(a).                                     
                       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 ground of rejection of appealed claim 4.  The examiner further erroneously states                    
               that all of the appealed claims “stand or fall together,” citing “37 CFR § 1.192(c)(7),” which                      
               rule, of course, was superseded by 37 CFR § 41.37(c)(1)(vii) (September 2004) by the time the                       
               brief was filed.                                                                                                    
                       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)(vii) 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               brief, the appeal is considered to be withdrawn with respect to that ground and the “withdrawal                     
               is treated as an authorization to cancel the withdrawn claims.”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 4 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.                                                                                                
                       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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