Ex Parte 6168598 et al

Patent Trials and Appeals Board

Jan 11, 2019

90013580 - (O) (P.T.A.B. Jan. 11, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,580 09/04/2015 6168598 2087-204059 1037
126543 7590 01/14/2019
Farney Daniels, PC
800 S Austin Avenue, Suite 200
Georgetown, TX 78626
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/14/2019 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 VITE TECHNOLOGIES, LLC
Appellant
____________________

Appeal 2018-003409
Reexamination Control 90/013,580
Patent 6,168,598 B1
Technology Center 3900
____________________

Before RAE LYNN P. GUEST, Administrative Patent Judge.

ORDER
BOARD RULE 41.35(b)(5)

On September 21, 2018, a Decision on Appeal was entered in this
reexamination proceeding (hereinafter “Decision”) which reversed the
Examiner’s rejections of claims 21 and 77–94 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement, and
under 35 U.S.C. § 112 second paragraph as being indefinite. Dec. 3–8. The
Board entered new grounds of rejection of claims 77, 82, and 90–92 under
35 U.S.C. § 112 second paragraph as being indefinite, and under 35 U.S.C.
§ 112 first paragraph as failing to comply with the written description
requirement, in accordance with 37 C.F.R. § 41.50(b). Id. at 8–11. The
Decision also states:
Appeal 2018-003409
Reexamination Control 90/013,580
Patent 6,168,598 B1

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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.”

37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
prosecution will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same record. . . .
Id. at 10–11.
With respect to the new grounds of rejection of claims 77, 82, and 90–
92, Patent Owner had the option to file either a request for reopening of
prosecution or a request for rehearing within two months from the date of
the Decision in accordance with 37 C.F.R. § 41.50(b) to avoid termination of
the appeal as to the rejected claims. See Dec. 8–11. Because Patent Owner
did not timely file either a request to reopen prosecution or a request for
rehearing, the appeal proceeding has terminated as to the rejection of claims
77, 82, and 90–92. See 37 C.F.R. § 41.50(b); MPEP § 1214.06(IV).
In accordance with 37 C.F.R. § 41.35(b)(5), the jurisdiction of the
Board ends when Appellant fails to take any required action under 37 C.F.R.
§§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an
order of dismissal. Accordingly, it is so ordered that the appeal of the
Appeal 2018-003409
Reexamination Control 90/013,580
Patent 6,168,598 B1

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rejections of claims 77, 82, and 90–92 is dismissed pursuant to
§ 41.35(b)(5). Because the Board’s Decision of September 21, 2018,
reversed the Examiner’s rejections of the balance of the appealed claims, the
reexamination proceeding is before the Examiner for immediate action in
accordance with MPEP § 1214.04.

ORDER
In view of the foregoing, the appeal is DISMISSED as to claims 77,
82, and 90–92.
The reexamination proceeding is before the Examiner for the next
Office communication, as appropriate.

PATENT OWNER:
Farney Daniels, PC
800 S Austin Avenue, Suite 200
Georgetown, TX 78626