Appeal No. 2006-1585 4
Reexamination Control No. 90/005,888
(§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the
Board.” MPEP § 2273 (8th ed., Rev. 4, Oct. 2005)) goes somewhat further in stating that
“[i]n an ex parte reexamination filed on or after November 29, 1999, the patent owner
may appeal to the Board only after the final rejection of the claims.”
By reopening prosecution in the non-final Office action, the examiner in effect withdrew
the finality of the Office action mailed January 30, 2004. Therefore, at the present time claims
1-49 are not under final rejection. The record indicates that the patent owner was well aware of
this fact and the problems it might pose in pursuing an appeal at this juncture of the
reexamination proceeding. For example, in the second notice of appeal filed June 24, 2005, the
patent owner pointedly left blank the space provided for insertion of the date of the “final office
action” being appealed, signifying an awareness that the Office action being appealed was not a
final rejection. In contrast, the first notice of appeal filed March 30, 2004 specified the January
30, 2004 date of the final rejection (since withdrawn) being appealed. Furthermore, the curious
submission of the request that the appeal, i.e., the first appeal, be maintained and the first reply
brief suggests that the patent owner appreciated the questionable nature of an appeal from a non-
final Office action.
At this point, we would note that in the non-final Office action (see page 2) the
examiner, citing 37 CFR § 1.193(b)(2), directed the patent owner to respond by filing
either a reply under 37 CFR § 1.111 or a request for reinstatement of the appeal and a
supplemental brief. This instruction was erroneous because 37 CFR § 1.193 previously
had been withdrawn in its entirety effective September 13, 2004. See 69 FR 49960,
50000, August 12, 2004; and 1286 OG 21, 54, September 7, 2004. The patent owner, in
apparent recognition of the examiner’s error, instead chose to file the unorthodox
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