Appeal No. 2006-1585 5
Reexamination Control No. 90/005,888
combination of (1) a request that the first appeal be maintained with an accompanying
reply brief pursuant to 37 CFR § 41.39(b)(2), and (2) a second appeal pursuant to 37 CFR
§ 41.31.
The patent owner’s reliance on § 41.39(b)(2) as authority for requesting that the
first appeal be maintained is untenable. Such provision pertains solely to responses to
new grounds of rejection in an examiner’s answer. To justify the request, the patent
owner urged that the non-final Office action “although styled as an office action, was in
fact in response to the appeal brief originally filed in the USPTO June 30, 2004 . . . . [i]n
other words, the paper mailed by the USPTO May 10, 2005 was an examiners' answer”
(second reply brief, page 2). Clearly, however, the non-final Office action was not an
examiner’s answer in either styling or substance.
The reopening of prosecution by the examiner in the non-final Office action
removed the basis for the first appeal mandated by statute, i.e., the final rejection mailed
January 30, 2004, and thus rendered the first appeal moot. The patent owner’s request to
maintain such appeal has no basis in law or reason. That the examiner tacitly approved
the patent owner’s submissions by mailing an answer to the first reply brief,
acknowledging receipt of the second reply brief and forwarding the proceeding to the
Board is of no moment. Once prosecution was reopened in the non-final Office action,
the first appeal stood terminated.
The second appeal filed pursuant to 37 CFR § 41.31 in response to the non-final
Office action did not solve the patent owner’s plight. The pertinent portion of
§ 41.31(a)(3) reproduced above, which echoes 35 U.S.C. § 134(b), does not support, and
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007