Appeal No. 2006-1585 2
Reexamination Control No. 90/005,888
d) on May 10, 2005, a different examiner took charge of the proceeding, reopened
prosecution and issued a non-final Office action containing various new rejections of claims
1-49;
e) on June 24, 2005, the patent owner filed a “37 CFR 41.31 NOTICE OF APPEAL” (the
second appeal) and a “37 CFR 41.39(b)(2) REQUEST TO MAINTAIN THE APPEAL BY
FILING A 37 CFR 41.41 REPLY APPEAL BRIEF” (the first reply brief) in response to the non-
final Office action;
f) on August 30, 2005, the examiner issued an answer to the first reply brief;
g) on October 3, 2005, the patent owner submitted a “37 CFR 41.41 SECOND REPLY
BRIEF” (the second reply brief) in response to the answer; and
h) on January 23, 2006, the examiner issued a paper acknowledging receipt of the second
reply brief and forwarded the proceeding to this Board.
As a preliminary matter, we note that at the time the non-final Office action dated May
10, 2005 was mailed, Manual of Patent Examining Procedure (MPEP) §§ 706.07(e), 1002.02(d)
and 1208.01 (8th ed., Rev. 2, May 2004) required the approval of a supervisory patent examiner
for any new ground of rejection made in an Office action reopening prosecution after the filing
of an appeal brief. MPEP § 2275 (8th ed., Rev. 2, May 2004) made it clear that the requirement
applied to appeals in patents undergoing ex parte reexamination proceedings.1 Notwithstanding
this directive, the electronic copy of the non-final Office action appearing in the IFW does not
show that the new grounds of rejection set forth in the action were approved by a supervisory
patent examiner. The lack of supervisory approval was subsequently cured, however, by a
decision on petition mailed June 27, 2005. Although the decision on petition dealt with an
unrelated matter, it referred twice to the “non-final Office action” over the signature of a Director
of Technology Center 3600 and hence implicitly ratified the action and the new grounds of
rejection contained therein. Moreover, and in any event, the patent owner did not challenge the
1 Although the MPEP has since been revised, §§ 706.07(e), 1002.02(d), 1207.04 and 2275 (8th ed., Rev. 4, Oct.
2005), which are currently in effect, carry forward the requirement for supervisory approval in this circumstance.
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