Ex Parte 7,379,900 et al

Patent Trial and Appeal BoardNov 27, 2012

90010701 (P.T.A.B. Nov. 27, 2012)

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. 90/010,701 11/05/2009 7,379,900 case C reexam 2008 62250 7590 11/27/2012 Stephen C. Wren 1616 S. Voss Rd.Suite 125 Houston, TX 77057 EXAMINER CHOI, WOO H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/27/2012 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 ____________ Ex parte Variant Holdings, LLC and Variant, Inc.1, Appellant and Patent Owner ____________ Appeal 2012-002721 Reexamination Control 90/010,701 Patent 7,379,900 B12 Technology Center 3900 ____________ Before, JOSEPH A. FISCHETTI, KEVIN F. TURNER, and DANIEL S. SONG, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Variant Holdings, LLC and Variant, Inc. are the real parties in interest (App. Br. 2). 2 Issued May 27, 2008, to Stephen Corey Wren. Appeal 2012-002721 Reexamination Control 90/010,701 United States Patent 7,379,900 B1 2 STATEMENT OF THE CASE Appellant requests that we reconsider the Panel’s Decision of April 26, 2012 (hereinafter “Decision”), in Appellant’s Request for Rehearing (hereinafter “Request”), filed June 26, 2012 (“Req. Reh’g.”), wherein we affirmed the Examiner’s decision to reject claims 1-5 under 35 U.S.C. §§ 102(b) and (e). (See Decision 31.) Based on the discussion which follows, the request for rehearing is denied. PRINCIPLES OF LAW Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1), and “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Moreover, requests must specifically recite “the points of law or fact which appellant feels were overlooked or misapprehended by the Board.” (MPEP § 1214.03.) Arguments raised by Appellants for the first time in a Request for Reconsideration are waived if the arguments were required to have been made in the Briefs, unless good cause is shown. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008). DISCUSSION Appellant’s Request for Rehearing does not contend that the Decision overlooked or misapprehended any points of law or fact in affirming the Examiner’s rejection of claims 1-5, but instead requests that the Board consider Appellant’s Reply Brief, filed November 7, 2012, which the Appeal 2012-002721 Reexamination Control 90/010,701 United States Patent 7,379,900 B1 3 Examiner found failed to comply with 37 C.F.R. § 1.550(f), and as such, did not consider. (Req. Reh’g. 2.) Notwithstanding, in their Request, Appellant urges the Board to grant a rehearing in which we consider Appellant’s Reply Brief, and render a new decision in light of Appellant’s Reply Brief, which Appellant states “contain[s] evidence and many arguments not included in Appellant’s appeal brief . . . .” (Req. Reh’g. 2.) We do not find Appellant’s line of argument, however, to raise any issue that can be decided on appeal. The actions of the Examiner in such a matter are not within our purview. In re Watkinson, 900 F.2d 230, 232-33 (Fed. Cir. 1990) (The Board has no jurisdiction for matters within the discretion of the examiner and not tantamount to a rejection of claims). Procedural matters, such as the propriety of the Examiner’s decision to not consider Appellant’s Reply Briefs,3 should have been raised by way of a timely petition pursuant to 37 C.F.R. § 1.181.4 Because we have jurisdiction over an appeal from a final rejection under 35 U.S.C. §§ 134(b) and 315(a), but not over such petitionable matters, we decline to consider Appellant’s Request. As such, we make no findings of fact or judgment with respect to the Examiner’s actions. 3 In addition to the Reply Brief filed November 7, 2011, Appellant previously filed reply briefs on October 31, 2011 and November 1, 2011, respectively. In a correspondence, mailed December 5, 2011, the Examiner indicated that these three reply briefs failed to comply with the service requirement required under 37 C.F.R. § 1.550(f). 4 It appears that Appellant filed a certificate of service on December 9, 2011, however, there is no indication or acknowledgement by the Examiner, on the record, that this service was timely or otherwise complied with the requirements of 37 C.F.R. § 1.550(f) or MPEP § 2265. (See MPEP §2266.02.) Appeal 2012-002721 Reexamination Control 90/010,701 United States Patent 7,379,900 B1 4 DECISION Accordingly, while we have granted Appellant’s request for rehearing to the extent discussed above, the request is denied with respect to making any modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED PATENT OWNER: STEPHEN WREN 6 MONARCH TRACE COURT, #102 CHESTERFIELD MO 63017 THE THIRD PARTY REQUESTOR: LAWRENCE A. AARONSON 12850 HIGHWAY 9 SUITE 600 PMB 338 ALPHARETTA GA 30004