Ex Parte 6554446 et al

Patent Trial and Appeal BoardSep 26, 2012

95000067 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. 60. 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICAnON NO, FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMAnON NO. 855895/000,067 12/20/2004 6554446 108-0184 7590 09/26/2012 EXAMINER Gordon E. Gray, III GRAY LAW FIRM CLARKE, SARA SACHIE 4401 N. Atlantic Avenue ART UNIT PAPER NUMBER Suite 223 Long Beach, CA 90807 3993 MAIL DATE DELIVERY MODE 09/26/2012 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 ____________ Tempo Lighting, Inc., Requester and Respondent, v. Patent of Tivoli LLC., Patent Owner and Appellant ____________ Appeal 2011-012102 Reexamination Control 95/000,067 Patent 6,554,446 B1 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Third-Party Requester Tempo Lighting, Inc (“Requester”) requests rehearing under 37 C.F.R. § 41.79 of our decision mailed February 24, 2012 Appeal 2011-012102 Reexamination Control 95/000,067 Patent 6,554,446 B1 2 (hereinafter “Decision”) in the appeal of the reexamination of United States Patent 6,554,446 B1 (hereinafter the “‘446 Patent) in which we reversed the Examiner’s obviousness rejections of claims 1-3 and 9 over certain prior art publications. (Request for Rehearing filed June 6, 2011, hereinafter “Request,” at 1; Decision, p. 4-5, 14-15, 19.) Patent Owner Tivoli LLC (“Patent Owner”) filed comments on Requester’s Request for Rehearing. (Appellant’s Opposition Request for Rehearing filed April 26, 2012, hereinafter “Opposition”.) Requester argues that in light of the interpretation of the claim term “inert to light” in the Decision, which is different from the interpretation applied by the Examiner, the Board overlooked the unpatentability of the claims over the primary references applied by the Examiner, and that the Board should reconsider the prior art in light of the interpretation it set forth in the Decision. (Request, p. 1, ll. 31-33, p. 3, ll. 16-19.) Alternatively, Requester urges that the Board should remand this case to the Examiner for consideration of the art of record in accordance with the Board’s interpretation. (Request, p. 1, l. 33 – p. 2, l. 2.) 37 C.F.R. § 41.79(b)(1) limits a request for rehearing (with limited exceptions) to “points believed to be misapprehended or overlooked in rendering the Board’s opinion reflected in its decision.” In the instant case, we do not agree with Requester that we overlooked or misapprehended the prior art rejections based on the proper interpretation of the term “inert to light.” Specifically, as summarized in the Decision, the interpretation of “inert to light” was advocated by Patent Owner through the course of the Appeal 2011-012102 Reexamination Control 95/000,067 Patent 6,554,446 B1 3 entire appeal. (Decision 5-6.) This interpretation is consistent with the written description of the ‘446 Patent. (Patent Owner Appeal Brief, p. 14; Decision 8.) Requester previously asserted that regardless of the interpretation of “inert to light,” the claims would have been unpatentable over the prior art of record, but chose not to cross-appeal the proposed rejections not adopted by the Examiner which were based on the Patent Owner’s interpretation of the claims. (Decision 10, 15 (FN 4).) Thus, even though the Examiner’s adopted rejections were based on a different interpretation of “inert to light,” Requester had the opportunity in this inter partes reexamination proceeding to cross-appeal those proposed rejections not adopted by the Examiner, which the Requester advocates would apply to the claims based on the interpretation of “inert to light” adopted in the Decision. In this regard, we do not perceive any due process issues as Requester had the option to cross-appeal the Examiner’s decision not to adopt the very rejections it now advocates for the Board to consider and adopt, an avenue that Requester voluntary declined to pursue. Because the claim interpretation adopted in the Decision was the very claim interpretation advocated by Patent Owner and argued against by Requester throughout the course of this reexamination proceeding including appeal, Requester was on notice as to the real possibility that Patent Owner’s claim interpretation could be accepted on appeal, thus providing incentives to cross-appeal the Examiner’s decision not to adopt the proposed rejections. Moreover, there are also due process and policy considerations involved with the Patent Owner and the public, respectively. In subjecting the Patent Owner to an inter partes reexamination proceeding, Requester Appeal 2011-012102 Reexamination Control 95/000,067 Patent 6,554,446 B1 4 bears the responsibility to timely present the grounds of rejection asserted against the challenged patent based on the issues identified and the points contested by Patent Owner throughout the course of the proceeding. In this case, because claim interpretation was a central issue in this appeal, it was the responsibility of the Requester to pursue those non-adopted rejections for which it disagreed with the Examiner (whether the disagreement be based on any findings of fact, or conclusions of law), so that the Patent Owner and the public remain on notice as to the issues being resolved in the reexamination and appeal. By not cross-appealing the rejections, Requester effectively provided notice that it was no longer interested in pursuing the proposed rejections, even in the event that the Patent Owner’s claim interpretation was accepted. Further, Ex Parte Dunn, 2007 Pat. App. LEXIS 3788 (BPAI, 2007) relied on by Requester to suggest that this case should be remanded (Request 4, 5) is not a recent decision that is covered in the exception in 37 C.F.R. § 41.79(b)(2). In addition, the facts in Dunn are not applicable in the instant situation, because in this inter partes reexamination, rejections consistent with the interpretation of “inert to light” set forth in the Decision had been proposed, were not adopted by the Examiner, and the Requester declined to challenge that decision of the Examiner. Therefore, we decline to make any changes in the Decision mailed February 24, 2012. Accordingly, the Request for Rehearing is denied. DENIED Appeal 2011-012102 Reexamination Control 95/000,067 Patent 6,554,446 B1 5 PATENT OWNER: GORDON E. GRAY, III 4401 N. ATLANTIC AVENUE SUITE 223 LONG BEACH, CA 90807 THIRD-PARTY REQUESTER: HOWARD J. KLEIN KLEIN O’NEILL & SINGH, LLP 18200 VON KARMAN AVENUE, SUITE 725 IRVINE, CA 92612 cu