Appeal 2007-2205
Application 10/396,013
albeit the Examiner noted the following change: “The ODP rejection
(rejection 3) is not being appealed but is only supplied to establish
continuity” (Answer 3). The Examiner did not present the obviousness-type
double patenting rejection in the Grounds of Rejection Section of the
Answer. Consequently, the Answer appears inconsistent and incomplete in
failing to present the obviousness–type rejection or otherwise fully explain
the absence of the presentation of the obviousness–type double patenting
rejection in the Answer given that the Answer notes that the rejection was
being supplied.
Also, as evidenced by the submission of the Examiner’s Answer, the
Examiner appears to have accepted the Amended Appeal Brief of November
30, 2006 as being in compliance with our regulations, notwithstanding the
inconsistencies therein concerning the obviousness-type double patenting
rejection identified above. Thus, the multiple Briefs and Answer, taken in
light of the pre-appeal papers, leave the appeal record in an unclear status for
our review.
BASIS FOR REMAND
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 Appellant does not
present an Examiner’s ground of rejection for review in the Brief or where
Appellant indicates a withdrawal of an appeal from a ground of rejection
maintained by the Examiner, the appeal is considered to be withdrawn with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cancel the withdrawn claims.”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).
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