Ex Parte Roach et al

Patent Trial and Appeal BoardNov 14, 2012

09957459 (P.T.A.B. Nov. 14, 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. 09/957,459 09/21/2001 Warren Roach 166.0001 2504 25534 7590 11/14/2012 CAHN & SAMUELS LLP 1100 17th STREET NW SUITE 401 WASHINGTON, DC 20036 EXAMINER TO, BAOQUOC N ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 11/14/2012 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 WARREN ROACH, STEVEN R. WILLIAMS, TROY J. REIBER, and STEVEN C. BURDINE ____________________ Appeal 2011-005982 Application 09/957,459 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and BRYAN F. MOORE, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-005982 Application 09/957,459 2 Pursuant to 37 C.F.R. § 41.52, Appellants have submitted a timely Request for Rehearing dated October 24, 2012 (hereafter the “Request”), requesting rehearing of the August 27, 2012 Decision (hereafter “Decision”). In that Decision, the Board reversed the Examiner’s rejections of:  claims 1-16,18, 34-49, and 51-59 under 35 U.S.C. § 112, second paragraph as being indefinite;  claims 44-50 and 58 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy; and  claims 39, 41, and 42 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, Parthasarathy, and Midgely and the Board affirmed the Examiner’s rejections of:  claims 1-16, 18, and 52-57 under 35 U.S.C. § 103(a) as being unpatentable over Koshisaka, Dunphy, and Parthasarathy;  claims 34-38, 43, and 59 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy; and  claim 40 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, Parthasarathy, and Midgely. Appellants request rehearing of our reversal of the Examiner’s rejection of claims 44-50 and 58 and for omission of a decision regarding claim 51. We have reconsidered the Opinion in light of Appellants’ comments in the Request. To the extent indicated below, we grant the Request. Appeal 2011-005982 Application 09/957,459 3 ANALYSIS In their Request, Appellants allege that the Board’s Decision mistakenly indicated the Examiner erred in the rejection of claims 44-50 and 58 under 35 U.S.C. § 103(a) for including claim 50 since claim 50 has been withdrawn. Appellants additionally suggest reference to claim 50 was intended to refer to claim 51 as a decision regarding the rejection of claim 51 was missing. Upon review of our Decision, we agree with Appellants that claim 50 was inadvertently included. Claim 50 was withdrawn from consideration (see Non-Final Rej. of May 12, 2010) and thus, was not under appeal. Additionally, with respect to Appellants’ request regarding claim 51, we find claim 51 depends from claim 44. We reversed the Examiner’s rejection of claim 44 as set forth in our decision (Decision 8-9). Therefore, dependent claim 51 stands with independent claim 44. Accordingly, the Examiner erred in concluding the combination of Dunphy, Koshisaka, and Parthasarathy would have taught or suggested the invention as recited in claim 51. DECISION The Examiner’s rejection of claim 51 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy is reversed. Our reversal of claim 50 under 35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy is vacated. Appeal 2011-005982 Application 09/957,459 4 Accordingly, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision and have GRANTED it with respect to the above changes to the Decision. REHEARING GRANTED msc