Ex Parte Herbert et al

Patent Trial and Appeal BoardJun 23, 2017

13160487 (P.T.A.B. Jun. 23, 2017)

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. 13/160,487 06/14/2011 Stephen L. Herbert JR. CAM920100062U S1 (7321-269 3448 46321 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 06/27/2017 EXAMINER BURKE, JEFF A ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 06/27/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN L. JR. HERBERT, TOLGA ORAL, and MICHAEL W. SORENSON Appeal 2016-006322 Application 13/160,487 Technology Center 2100 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellants filed a Request for Rehearing (Req. Reh’g) alleging a misapprehension or oversight by this Board in a Decision on Appeal dated March 28, 2017 (Dec.). In that Decision, the Board affirmed the Examiner’s provisional rejection of claims 7—18 under the non-statutory ground of obviousness-type double patenting.1 1 The Decision reversed the Examiner’s rejection of claims 7—18 under 35 U.S.C. § 103(a), thus leaving the provisional double patenting rejection as the only rejection sustained on appeal. Appeal 2016-006322 Application 13/160,487 ANALYSIS Appellants contend the following: [I]t seems that some confusion has arisen as the only remaining rejections are “provisional” in nature with respect to obviousness type double patenting. Therefore, it seems that the outcome of the Decision should have been “REVERSED” or perhaps “AFFIRMED IN PART.” Of course, the process to be followed by the Examiner subsequent to the Decision depends upon this critical distinction. Req. Reh’g 4. We disagree with Appellants. The following portion of the Manual of Patent Examining Procedure, also cited in the Decision (Dec. 5—6), provides guidance on the issue Appellants raise: If a “provisional” nonstatutory double patenting rejection is the only rejection remaining in an application, and that application has an effective U.S. filing date (including any benefit claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)) that is later than, or the same as, the effective U.S. filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection. In accordance with 37 CFR 1.111(b), applicant’s reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. Alternatively, a reply that includes the filing of a compliant terminal disclaimer in the later-filed application under 37 CFR 1.321 will overcome a nonstatutory double patenting rejection and is a sufficient reply pursuant to 37 CFR 1.111(b). Upon the filing of a compliant terminal disclaimer in a pending application, the nonstatutory double patenting rejection will be withdrawn in that application. MPEP § 804(I)(B)(1) (emphasis added). Here, the reference application— U.S. Application 13/411,579—is a divisional application of the present 2 Appeal 2016-006322 Application 13/160,487 application, and thus has the same effective U.S. filing date as the present application. Accordingly, the provisional double patenting rejection must be maintained until Appellants overcome the rejection. See id. Although Appellants filed a terminal disclaimer on May 30, 2017, the Examiner has not yet withdrawn the provisional double patenting rejection and the filing of the Terminal Disclaimer after the Decision does not identify any points “misapprehended or overlooked by the Board” in the Decision based upon the administrative record at the time of the Decision.2 37 C.F.R. § 41.52. Thus, we maintain the Decision with respect to sustaining the provisional double patenting rejection. Moreover, the Decision properly indicated that the Examiner’s decision rejecting the appealed claims 7—18 was “AFFIRMED” (Dec. 6), because at least one ground of rejection—the non-statutory ground of obviousness-type double patenting—was sustained for each of claims 7—18. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.”). Accordingly, we decline to modify the Decision with respect to the sustained provisional double patenting rejection, or with respect to the overall affirmance of the Examiner’s decision rejecting claims 7—18. 2 We note it is the province of the Examiner to withdraw a rejection, while the Board’s role is to review adverse decisions of Examiners, i.e., to sustain or reverse outstanding rejections. See 35 U.S.C. § 6(b)(1); 37 C.F.R. § 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.”). 3 Appeal 2016-006322 Application 13/160,487 CONCLUSION To the extent we have provided additional clarification beyond that of our Decision, Appellants’ Request for Rehearing is granted, in that we have considered Appellants’ arguments and provided additional explanation which we incorporate into the Decision. As discussed above, however, we are not persuaded by Appellants’ arguments that the Decision should be a reversal or affirmance-in-part. Rather, we maintain our Decision affirming the Examiner’s decision rejecting claims 7—18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REQUEST FOR REHEARING GRANTED 4