Ex Parte Kamper et al

Patent Trial and Appeal BoardSep 23, 2014

12212149 (P.T.A.B. Sep. 23, 2014)

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. 12/212,149 09/17/2008 SUSAN L. KAMPER 7054US 9801 7590 09/23/2014 John A. O'Toole P.O. Box 1113 Minneapolis, MN 55440 EXAMINER WILLIAMS, LELA ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 09/23/2014 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 SUSAN L. KAMPER, FERN A. PANDA, and DANIEL R. GREEN ________________ Appeal 2012-011923 Application 12/212,149 Technology Center 1700 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellants request reconsideration of our decision to affirm the Examiner’s rejection of claims 1–9 under 35 U.S.C. § 103 over Zietlow ’460 (Req. Reh’g 5). The Appellants point out (Req. Reh’g 3–4) that they state in their Appeal Brief (App. Br. 7): The second possible inclusion of starch in Zietlow ‘460 is in column 12, lines 6-16. Actually, this reference to starch is not relied upon by the Examiner but is worth mentioning. Here, a foam structuring agent can include modified starches. However, it will also be clear from reviewing this section of Zietlow ‘460 that the structuring agent is preferably a gelatin and is certainly “dissolved or dispersed in a suitable carrier, preferably water.” Appeal 2012-011923 Application 12/212,149 2 The Examiner states with respect to that portion of Zietlow ’460 only the following (Ans. 5): Regarding Appellants[’] statement of the “second possible inclusion of starch”, the foam structuring agent which includes modified starch (col. 12, lines 6-16) was not taught by the reference to have been the saccharide component, i.e., cornstarch. Zietlow ‘460 clearly teaches these as separate components, therefore appellant’s argument is not convincing. The Appellants point out that the Board’s affirmance of the rejection is based only upon Zietlow ’460’s above-mentioned disclosure and other disclosures therein not relied upon by the Examiner in the final rejection (mailed Oct. 10, 2011) or the Examiner’s Answer, i.e., the disclosures at column 12, lines 35–48 and column 12, line 66 – column 13, line 10 (Decision 3–5) (Req. Reh’g 4–5). The Appellants argue that because the affirmance is based upon a different portion of Zietlow ’460 than that relied upon by the Examiner, the Appellants have not had an opportunity to respond to the affirmed rejection (Req. Reh’g 5). Accordingly, the Appellants request that we denominate the affirmance as a new ground of rejection. See id. To provide the Appellants with the requested opportunity to respond to the Board’s rationale in affirming the rejection, we denominate the affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION The Appellants’ request for rehearing is granted to the extent that we denominate the affirmance as a new ground of rejection, but is denied with respect to making any other change to the decision. Appeal 2012-011923 Application 12/212,149 3 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . GRANTED; 37 C.F.R. § 41.50(b) cdc