Ex Parte Hatlestad et al

Patent Trial and Appeal BoardSep 28, 2012

10787045 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEALS BOARD ____________________ Ex parte JOHN HATLESTAD, QINGSHENG ZHU, and MARINA V. BROCKWAY1 ____________________ Appeal 2011-003918 Application 10/787,045 Technology Center 3600 ____________________ Before, BIBHU R. MOHANTY, KEVIN F. TURNER, and MEREDITH C. PETRAVICK, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Cardiac Pacemakers Inc., is the real party in interest. Appeal 2011-0039187 Application 10/787,045 2 STATEMENT OF THE CASE In a Request for Rehearing (hereinafter “Request”), filed September 19, 2012 (“Req. Reh’g.”), Appellants request that we reconsider the Board’s Decision of July 19, 2012 (hereinafter “Decision”).2 Specifically, Appellants request that we reconsider our decision wherein we affirmed the Examiner’s decision to reject claims 1-6, 8-10, 13, 14, 16-22, and 24-27 under 35 U.S.C. § 102(e) as anticipated by Warkentin and claims 7, 11, 23, and 28 under 35 U.S.C. § 103(a) as unpatentable over the combination of Warkentin and Mann. (See Decision 8.) 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. 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). 2 Our decision on rehearing will make reference to the Appellants’ Appeal Brief (“Br.,” filed August 25, 2010). Appeal 2011-0039187 Application 10/787,045 3 DISCUSSION Appellants assert that the Board improperly affirmed the rejection of independent claim 24 based on the analysis of claim 1 without a rational explanation or justification as to how the analysis applied to the method of independent claim 24. (Req. Reh’g. 1-2.) Thus, Appellants request that “the Board analyze the rejection of claim 24 separately.” (Req. Reh’g. 2.) We are not persuaded by Appellants’ argument and decline to analyze the rejection of independent claim 24 separately. In making this determination, we find that Appellants argued independent claims 1, 9, and 24 as a group in their Appeal Brief. (Br. 12.) Specifically, Appellants stated: [i]ndependent claims 1, 9, and 24 recite or similarly recite ‘an implantable device configured to implantably electrically monitor fluid retention; an external, non- ambulatory pill-dispensing containment unit configured to accessibly house diuretic medication, the containment unit including a diuretic medication pill receptacle configured to house the diuretic medication and configured to be selectively accessed by a person to dispense the diuretic medication; . . . said health management host system configured to receive data related to the medication event, receive patient physiological data including fluid retention data collected by the implantable device, analyze the patient physiological data and the medication event data, and generate a diuretic medication therapy regimen using the analysis of the patient physiological data and the medication event data.’ (Br. 12-13.) Based upon Appellants’ explicit statement that claims 1, 9, and 24 “recite or similarly recite” the limitations of independent claim 1, we selected claim 1 as the representative claim for this group, consistent with 37 Appeal 2011-0039187 Application 10/787,045 4 C.F.R. § 41.37(c)(1)(vii), and indicated that the remaining independent claims 9 and 24 stand or fall with claim 1. (See Decision 5 fn4.) Moreover, each one of Appellants arguments in the Appeal Brief were directed to the limitations of independent claim 1. (See Br. 13-15.) Thus, Appellants have failed to show that we overlooked or misapprehended any points of law or fact in grouping independent claims 1, 9, and 24 together. Notwithstanding, Appellants’ Request still makes no arguments with respect to the limitations recited by independent claim 24, and “the Board will not, as a general matter, unilaterally review those uncontested aspects of [Appellant’s] rejection.” Ex parte Frye, 94 U.S.P.Q. 2d 1072, 1075(BPAI Feb. 26, 2010). Accordingly, we find Appellants’ Request fails to state with particularity the points the Board misapprehended or overlooked with respect to independent claim 24 and fails to explain, to the extent the Request includes any argument regarding claim 24, why the argument is now being made, but could not have been made earlier (i.e., good cause for omission). Therefore, we decline to modify our original Decision. DECISION Accordingly, while we have granted Appellant’s request for rehearing to the extent that we have reconsidered our previous decision, 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). Appeal 2011-0039187 Application 10/787,045 5 REHEARING DENIED