Claude Van Ness

Patent Trials and Appeals BoardAug 30, 2021

2020005742 (P.T.A.B. Aug. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/120,486 05/23/2014 Claude Louis Van Ness CVN011US 4582 7590 08/30/2021 Robert E. Wise 660 Oakmont Ct. Fairview, TX 75069 EXAMINER EVANISKO, LESLIE J ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 08/30/2021 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAUDE LOUIS VAN NESS Appeal 2020-005742 Application 14/120,486 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and JANE E. INGLESE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. ORDER REMANDING TO THE EXAMINER Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 4–8, 13, 15–19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Claude Van Ness. Appeal Br. 3. Appeal 2020-005742 Application 14/120,486 2 We have reviewed the record (including the Final Office Action, Appeal Brief, Answer, and Reply Brief2), and have concluded that further consideration of a rejection(s) is needed from the Examiner based upon certain points made by Appellant, discussed, infra. Accordingly, we remand this application to the Examiner, via the Office of Director of the involved technology center, to consider the following, and to take action not inconsistent with the views expressed herein. MPEP § 706.02 provides for reliance upon foreign documents in support of a rejection. If the document is in a language other than English and the examiner seeks to rely upon that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejections. See also MPEP § 1207.02. Appellant contests the Examiner’s use of two different machine translations of the Iizuka reference. The first machine translation was initially provided by the Examiner in the Office Action dated August 10, 2017. Final Act. 10. The second machine translation was then provided by the Examiner in the Answer. Ans. 9–10. The first machine translation uses the word “stiffened” (¶ 9) whereas the second translation uses the word “cured” (¶ 9). Ans 9–10. There is dispute in the record as to whether Iizuka discloses that photosensitive material 3 of screen 1 is cured. Appellant argues that the word “stiffened” is not necessarily the same as “cured.” Appeal Br. 14–15. Because all patentability determinations are fact dependent, obtaining and considering full text documents will yield the most complete available 2 Beginning on page 2 of the Reply Brief, Appellant argues that the Answer includes a new ground of rejection not designated as such. Such an issue is a petitionable matter under 37 CFR § 1.181. MPEP 1207.03 IV. Appeal 2020-005742 Application 14/120,486 3 set of facts upon which to determine patentability. The present circumstances, which are that there are two machine translations that differ as discussed, supra, warrants that the Examiner order and rely upon a hand translation from the Scientific and Technical Information Center (STIC) to yield the most complete available set of facts upon which to determine patentability.3 In view of the above, we have decided to remand this case to the Examiner for ordering of a hand translation as discussed above, and implementation of such by way of a substitute examiner’s answer, in response to this remand. MPEP § 1207.05. In reply to the substitute examiner’s answer in response to a remand by the Board for further consideration of a rejection(s) pursuant to 37 CFR 41.50(a)(2), Appellant must, within two months of the date of the substitute examiner’s answer, exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding: (i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. A request that complies 3 It is noted that Appellant could have filed a certified translation contesting the reliability of the machine translation, and then the Examiner would have been able to consider the certified translation. In this way, such consideration occurs at an earlier practicable time in the examination process. Appeal 2020-005742 Application 14/120,486 4 with 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal. (ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i). The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. In view of the above, this application is remanded to the Examiner for the reasons given above. CONCLUSION This application is remanded to the Examiner to take action not inconsistent with the views expressed above. This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(2) is made for further consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies when a substitute examiner's answer is written in response to this Remand by the Board. REMANDED