Ex Parte Jordan

Patent Trial and Appeal BoardAug 22, 2013

10522721 (P.T.A.B. Aug. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CLIFFORD L. JORDAN __________ Appeal 2011-007291 Application 10/522,721 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and JOHN G. NEW, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing (reconsideration) of the decision entered March 21, 2013. That decision affirmed the Examiner’s obviousness-type double patenting rejections. Appellant’s request has been granted to the extent that the decision has been reconsidered, but such request is denied with respect to making any modifications to the decision affirming the Examiner’s obviousness-type double patenting rejections. Appeal 2011-007291 Application 10/522,721 2 DISCUSSION New Ground Appellant contends that the “Examiner’s Answer did not raise this issue (that the instant application was not filed until after the issuance of Appellant’s parent ’616 patent), and failed to make any final rejection upon this ground” (Req. Reh’g 4) (emphasis omitted). Appellant contends “that this is a new ground of rejection to which Appellant has not yet been accorded an opportunity to address and explain the error in this new ground of rejection” (id. at 5). We are not persuaded. In the Answer, the Examiner rejected the claims over obviousness-type double patenting and found that § 121 safe harbor did not apply because “the instant application is not considered a divisional of US 6,820,616” (Ans. 11). The Examiner further finds that “in order to make a claim for priority certain criteria must be met” (id.) and points to 37 C.F.R. § 1.78 (a) and 35 U.S.C. § 121 (see id.). 37 C.F.R. § 1.78 (a)(1) reiterates the rule in 35 U.S.C. § 121 that a nonprovisional application may claim “an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America” (emphasis added). Our finding simply pointed to the filing dates of Appellant’s own applications, a fact of which Appellant was reasonably presumed to be aware, to explain that Appellant failed to satisfy either the copendency prong or the priority prong of the requirements established by 37 C.F.R. § 1.78 (a) and 35 U.S.C. § 121 to claim divisional status. This is fully consistent with the thrust of the Appeal 2011-007291 Application 10/522,721 3 Examiner’s double-patenting rejection denying divisional status to the instant application, to which Appellant had a fair opportunity to respond (see Ans. 10-11). See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection.”) §121 bar Appellant contends that “the reasoning articulated by the Court in Pfizer is inapposite to the facts pertaining to the divisional application now before the Board” (Req. Reh’g 6). Appellant contends that “35 U.S.C. §121 does not define a ‘divisional’ application, and does not impose a limitation such as that imposed by 37 CFR § 1.145 upon an applicant's ability to amend, cancel, revise and present new claims presented in a divisional application” (id. at 7). We are not persuaded. Pfizer rejected the argument that “the term ‘divisional application’ as it is used in section 121 refers broadly to any type of continuing application filed as a result of a restriction, regardless of whether it is labeled by the PTO, for administrative purposes, as a divisional, a continuation, or a CIP.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1360 (Fed. Cir. 2008). Pfizer concluded “that the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Id. at 1362. The instant application was not identified by Appellant as a divisional application when filed, and “[s]ince no benefit was timely claimed in the Appeal 2011-007291 Application 10/522,721 4 required manner, the instant application is not considered a divisional of US 6,820,616” (Ans. 11). Therefore, the protection by § 121 against double patenting over the claims of US 6,820,616 does not apply. Appellant contends that the “divisional application was filed with the filing of Appellant’s PCT/US03/19560 and well before the issuance of Appellant’s parent U.S. 6,820,616, and the relationship was updated in consonance with the progress of the examination of the instant S.N. 10/522,721” (Req. Reh’g 12). We are not persuaded. While the instant application certainly claims benefit of priority as a 371 to PCT/US03/19560, and through that PCT to provisional application 60/308,846, none of the filing receipts reproduced by Appellant in the Request for Rehearing show a claim for divisional status for the instant application, US 10/522,721. The Examiner found, and Appellant has not rebutted, that “an attempt to amend the specification to properly include the relationship on 3/27/2008 was made too late to comply with 37 CFR l.78(a)” (Ans. 11). As the Examiner noted, the original Specification, as filed and amended on Jan. 28, 2005, did not claim divisional status (id.). Appellant points to their November 26, 2007 filing receipt1 as showing a request for continuation status for 10/208,188 (see Req. Reh’g 8), but identify no claim for divisional status in that receipt, or any receipt filed within either time frame established by 1.78(a)(2)(ii), which requires a timely filed reference to prior-filed applications which reference indicates the relationship of the applications, where 1 We note that the July 11, 2007 filing receipt submitted by Appellant does not claim continuation status for 10/208,188. Appeal 2011-007291 Application 10/522,721 5 If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371 (b) or (f) in the later-filed international application or sixteen months from the filing date of the prior-filed application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application 37 C.F.R. § 1.78(a)(2)(ii). In the instant case, the reference filed on November 26, 2007 was more than four months after the national stage date of July 17, 2003 as well as more than sixteen months after the July 31, 2002 filing date of US 10/208,188 which matured into US 6,820,616. 37 C.F.R. § 1.78(a)(2)(ii) clearly indicates that the failure to timely submit the reference results in a waiver of priority benefit under 35 U.S.C. 121 (see Ans. 10-11). Appellant then addresses the issue of consonance which was fully addressed in our Decision. Upon reflection, we do not find that Appellant’s arguments or citation to the dissent in Boehringer2 demonstrate any error in our Decision. Appellant’s Request for Rehearing does not point to any argument, any evidence of record, or any legal authority, that was before us in the Briefs, that we overlooked or misapprehended in reaching the conclusions 2 Boehringer Ingelheim Intern. GmbH v. Barr Laboratories, Inc., 592 F.3d 1340 (Fed. Cir. 2010). Appeal 2011-007291 Application 10/522,721 6 set forth in the Decision. We therefore decline to alter our earlier conclusions. CONCLUSION Appellant’s Request for Rehearing is granted to the extent that we have reconsidered our earlier decision but denied in all other respects. 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). DENIED cdc