Ex Parte Dzau et al

Patent Trial and Appeal BoardNov 6, 2012

10850994 (P.T.A.B. Nov. 6, 2012)

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. 10/850,994 05/20/2004 Victor J. Dzau ANV-0021C5 2115 7590 11/07/2012 J. MICHAEL SCHIFF 4320 VON KARMAN AVENUE NEWPORT BEACH, CA 92660 EXAMINER WOITACH, JOSEPH T ART UNIT PAPER NUMBER 1633 MAIL DATE DELIVERY MODE 11/07/2012 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 VICTOR J. DZAU, GARY H. GIBBONS, and RYUICHI MORISHITA ____________ Appeal 2011-005465 Application 10/850,994 Technology Center 1600 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request reconsideration (rehearing) of the Board‟s opinion entered July 23, 2012 (Opinion) affirming the provisional rejection of claims 13 and 14 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of Morishita II, 1 which is the only rejection remaining in this Appeal (Req. Rh‟g 1; Cf. Opinion 2). We have jurisdiction under 35 U.S.C. § 6(b). 1 Morishita et al., US 2004/0162251 A1, published August 19, 2004. Appeal 2011-005465 Application 10/850,994 2 The only rejection pending in this Application is a provisional obviousness-type double patenting rejection over Morishita II. Appellants contend that Morishita II is currently pending and on Appeal at the Board (Req. Rh‟g 2). For the foregoing reasons, we grant Appellants‟ request and “reverse the [provisional] obviousness-type double patenting rejection” over Morishita II (Req. Rh‟g 5; Cf. Manual of Patent Examining Procedure § 804(I)(B) (“The „provisional‟ double patenting rejection should continue to be made by the examiner in each application as long as there are conflicting claims in more than one application unless that „provisional‟ double patenting rejection is the only rejection remaining in at least one of the applications”) (emphasis added)). Appellants‟ claims are currently free of rejection. REHEARING GRANTED; REVERSED alw