Ex Parte Whitman et al

Patent Trial and Appeal BoardMar 1, 2016

12499651 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/499,651 07/08/2009 50855 7590 03/03/2016 Covidien LP 555 Long Wharf Drive Mail Stop SN-I, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Michael P. Whitman 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H-PM-00034(1800-34) 1735 EXAMINER LIPITZ, JEFFREY BRIAN ART UNIT PAPER NUMBER 3769 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): mail@cdfslaw.com SurgicalUS@covidien.com medtronic_mitg-si_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL P. WHITMAN and DONALD MALINOUSKAS 1 Appeal2014-000108 Application 12/499,651 Technology Center 3700 Before BRANDON J. WARNER, AMANDA F. WIEKER, and RICHARD H. MARSCHALL, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael P. Whitman and Donald Malinouskas ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 1-10 and 21-23. 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is Covidien LP. App. Br. 1. 2 Claims 11-20 have been withdrawn. Id. at 2. Appeal2014-000108 Application 12/499,651 OPINION On November 27, 2012, the Examiner issued a Final Office Action rejecting claims 3-7 and 23 under 35 U.S.C. Â§ 112, second paragraph, as indefinite, and rejecting claims 1-10 and 21-23 under 35 U.S.C. Â§ 103(a) as unpatentable over Bays (US 5,796,188, iss. Aug. 18, 1998) and Mattinger (US 5,030,902, iss. Jul. 9, 1991). Final Act. 2-5. In a paper dated January 9, 2013, Appellants proposed to amend the claims after the Examiner's Final Office Action. See Jan. 9, 2013 Response 2---6. This amendment was not entered by the Examiner, as reflected in the Examiner's January 18, 2013 Advisory Action. See Adv. Act. 2; see also App. Br. 2 (reflecting Appellants' understanding that the amendment was not entered for purposes of appeal). On April 12, 2013, Appellants filed their Appeal Brief, including a Claims Appendix that lists the claims as reflected in the January 9, 2013 amendment that was not entered by the Examiner. See App. Br. 2, 11-15. This is inappropriate. See 37 C.F.R. Â§ 41.37(c)(2) (2015) ("A brief shall not include any new or non-admitted amendment .... "). The decision of an examiner to refuse entry of an amendment is a petitionable matter. In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an examiner to enter an amendment of claims is reviewable by petition under 3 7 C.F .R. Â§ 1.181, and not by appeal to the Board). Therefore, we must consider the claims as they stood at the time of the action from which the present appeal was taken, i.e., the November 27, 2012 Final Office Action. See Final Act. 1 (responsive to filing, including claim amendment, of October 22, 2012). 2 Appeal2014-000108 Application 12/499,651 Because the claims before us are those pending at the time of the Final Office Action, the Examiner's rejection of claims 3-7 and 23 under 35 U.S.C. Â§ 112, second paragraph, remains before us for review. See Final Act. 2; Ans. 3. The Appeal Brief does not address this rejection and, therefore, we summarily affirm it. See generally App. Br.; Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential). With respect to the Examiner's rejection of claims 1-10 and 21-23 under 35 U.S.C. Â§ 103(a) as unpatentable over Bays and Mattinger, Appellants only present arguments directed to a limitation ("two power cells") that Appellants attempted to add to independent claim 1 by the non- admitted amendment of January 9, 2013. App. Br. 5-9. However, because that claim language was not admitted and is not before us on appeal, Appellants' arguments are not commensurate in scope with the pending claims and, therefore, are unpersuasive. Appellants have not provided any arguments directed to the claim language that is actually before us, which does not recite "two power cells." Therefore, we affirm the Examiner's rejection. DECISION We AFFIRM the rejection of claims 3-7 and 23 under 35 U.S.C. Â§ 112, second paragraph. We AFFIRM the rejection of claims 1-10 and 21-23 under 35 U.S.C. Â§ 103(a) as unpatentable over Bays and Mattinger. 3 Appeal2014-000108 Application 12/499,651 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 4