Appeal 2006-3060
Application 09/683,735
to argue a rejected claim in an Appeal Brief. See MPEP § 1205.02 (8th ed.,
Rev. 3, August 2005).
37 C.F.R. § 41.31(c) provides, in part, that: “An appeal, when taken,
must be taken from the rejection of all claims under rejection which the
applicant or owner proposes to contest.” Thus, where Appellants do not
present an Examiner’s 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is considered to be withdrawn with respect to that ground and the
“withdrawal is treated as an authorization to cancel the withdrawn claims.”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). In this
regard, the grounds of rejection presented for review in the second
Supplemental Appeal Brief do not match the Examiner’s statement of the
grounds of rejection set forth in the Final Rejection and the Examiner’s
Answer.
As part of the procedural history of this application, we observe that
the Examiner maintained that the Supplemental Appeal Brief filed on
December 21, 2004 was defective for failure to comply with several
provisions of 37 C.F.R. § 41.37(c) in a Notification of Non-Compliant
Appeal Brief mailed September 22, 2005. In the Answer mailed
January 03, 2006, the Examiner agreed with Appellants’ “Status of Claims,”
“Summary of Claimed Subject Matter,” “Claims Appendix,” and “Grounds
of Rejection to be Reviewed on Appeal” set forth in the second
Supplemental Appeal Brief. Hence, the Examiner accepted the second
Supplemental Appeal Brief as being in compliance with our regulations,
notwithstanding the inconsistencies therein noted above. Thus, the multiple
Briefs and Answer leave the appeal record in an unclear status for our
review.
3
Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013