Appeal 2007-0989
Application 10/359,809
II. PRINCIPLES OF LAW
In an ex parte appeal, the Board of Patent Appeals and Interferences
"is basically a board of review − we review . . . rejections made by patent
examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001).
Here, after considering the record, we are persuaded that "[t]he appeal is
manifestly not ready for a decision on the merits." Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999). Our opinion addresses three reasons
for remanding.
III. EXPLANATION OF REJECTION
"[T]o have meaningful review, we must be able to understand the
examiner's rejection. . . ." Gambogi, 62 USPQ2d at 1211-12.
An "examiner's answer is required to include," M.P.E.P. § 1207.02 (8th ed.,
rev. 4, Oct. 20051), "[f]or each ground of rejection maintained by the
examiner . . . an explanation of the ground of rejection." (Id.) "In every
Office action, each pending claim should be mentioned by number, and its
treatment or status given." Id. 707.07(i).
Here, the Examiner rejects the sixty-one pending claims under
35 U.S.C. § 103(a) as obvious over U.S. Patent No. 6,462,264 ("Elam") and
U.S. Patent No. 5,763,805 ("Yamabata"). Although he enumerates
numerous disclosures of Elam and Yamabata (Answer 3-6), the Examiner
1 We cite to the version of the Manual of Patent Examining Procedure in
effect at the time of the Answer. The cited requirements likewise appear in
the latest version of the M.P.E.P.
2
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