Ex Parte Volk et al

Patent Trial and Appeal BoardSep 24, 2014

10883372 (P.T.A.B. Sep. 24, 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. 10/883,372 07/01/2004 William Volk 5222-05701/P1129 4048 61507 7590 09/25/2014 Entropy Matters LLC P.O. Box 2250 NEW YORK, NY 10021 EXAMINER BAHTA, KIDEST ART UNIT PAPER NUMBER 2127 MAIL DATE DELIVERY MODE 09/25/2014 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 WILLIAM VOLK, JAMES WILEY, STERLING WATSON, SAGAR A. KEKARE, CARL HESS, PAUL FRANK MARELLA, SHARON MCCAULEY, and ELLIS CHANG ____________ Appeal 2012-001451 Application 10/883,372 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–27 and 32–39. Br. 2; Ans. 3–4. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in view of the Examiner’s new findings (Ans. 12–21), which are both substantial and uncontested. 1 The Examiner finds that dependent claims 28–31 are allowable if rewritten into independent form. Ans. 12. Appeal 2012-001451 Application 10/883,372 2 More particularly, we affirm because (A) the record before us includes (i) the Examiner’s initial findings presented by the Final Rejection and repeated by the Answer’s Grounds of Rejection (Ans. 5–12), (ii) Appellants’ contentions that the initial findings are insufficiently explained and supported (Br. 4–48), (iii) the Examiner’s new findings presented in response to Appellants’ arguments (Ans. 12–21); and (B) Appellants’ have not contested the new findings by filing either a Reply Brief or a Petition under 37 C.F.R. § 1.181 for new grounds of rejection. Thus, the record presents substantial new findings made by the Examiner as to each contested claim with no opposing arguments from Appellants by which to address the new findings. Appellants bear a burden to address these findings, but have not done so. Note that we cannot neglect the new findings or contest them on behalf of Appellants. To neglect the new findings would be tantamount to rewriting the Answer, whereas the Board has no such authority (because the Answer’s preparation resides within the sole jurisdiction of the Director). See 37 C.F.R. § 41.64(a) (2008). To evaluate the new findings — e.g., against the applied prior art — would be tantamount to raising issues sua sponte, whereas the Board need not “unilaterally review . . . uncontested aspects of the rejection.” See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); see also Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat omitted arguments as waived). Appeal 2012-001451 Application 10/883,372 3 DECISION For the foregoing reasons, the Examiner’s decisions rejecting (i) claims 1–9, 12–24, 26, and 32–39 based on anticipation, and (ii) claims 10, 11, 25, and 27 for obviousness are affirmed. 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). AFFIRMED kis