Judith H. Bank et al.

Patent Trials and Appeals BoardJul 23, 2020

2018006825 (P.T.A.B. Jul. 23, 2020)

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. 13/686,275 11/27/2012 JUDITH H. BANK CAM920120065US1_8150-0229 1054 73109 7590 07/23/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER SAYOC, KRISTOFFER L S ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 07/23/2020 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUDITH H. BANK, LISA M.W. BRADLEY, and LIN SUN Appeal 2018-006825 Application 13/686,275 Technology Center 2400 Before ELENI MANTIS-MERCADER, LARRY J. HUME, and SCOTT E. BAIN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing of our Decision on Appeal mailed June 26, 2020. We reconsider but do not modify our Decision in light of Appellant’s Request, and therefore decline to reverse the Examiner’s rejection of claims 13–28 for the reasons provided, infra. Appeal 2018-006825 Application 13/686,275 2 BACKGROUND1 Appellant has filed a paper under 37 C.F.R. § 41.52 requesting we reconsider our Decision affirming the Examiner’s rejection of claims 13–28 under the judicially-created doctrine of obviousness-type double patenting (OTDP) allegedly because: [A] provisional non-statutory double patenting rejection need not be addressed in an Appeal Brief when the other rejections were reversed. In this instance, had the present Decision on Appeal been issued contemporaneously with the issuance of the Decision on Appeal dated May 16, 2019, in U.S. Application No. 14/023,534, Ex parte Moncla would have applied to the present application. In such a circumstance, the present Decision on Appeal would have resulted in the Examiner being reversed and the Board not reaching the provisional OTDP rejection. Request 4 (citing Ex Parte Moncla, Appeal 2009-006448 (BPAI 2010) (precedential)). 1 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Nov. 9, 2017); Reply Brief (“Reply Br.,” filed June 20, 2018); Request for Reconsideration (“Request,” filed June 26, 2020); Examiner’s Answer (“Ans.,” mailed Apr. 20, 2018); Final Office Action (“Final Act.,” mailed June 14, 2017); and the original Specification (“Spec.,” filed Nov. 27, 2012). Appeal 2018-006825 Application 13/686,275 3 APPELLANT’S ARGUMENTS We have only considered those timely arguments actually made by Appellant in deciding this Request. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.”). Appellant argues the Board erred in designating the obviousness-type double patenting (OTDP) rejection of claims 13–28 as non-provisional, instead of provisional, as set forth by the Examiner in the Final Action (3), resulting in a change in the thrust of the rejection from a provisional to a non-provisional rejection. Request 4. As a consequence, Appellant argues the Board erred in not designating the non-provisional OTDP rejection as a new ground of rejection. Id. This error purportedly results from the Board’s asserted reliance upon “new facts,” i.e., the issuance of the reference application as U.S. Patent No. 10,454,983, and upon “a new legal rationale (i.e., a non-provisional OTDP rejection instead of the previously-applied provisional OTDP rejection).” Id. RESPONSE TO ARGUMENTS We are not persuaded of error in our Decision and conclude we have not misapprehended the Examiner’s rejection in our Decision, nor have we overlooked any of Appellant’s arguments in the briefs, as discussed below. We note our Decision does not identify any specific arguments as untimely, nor did we exclude any of Appellant’s arguments from consideration in reaching our ultimate Decision and its legal conclusions. We are further unpersuaded that our pro forma affirmance of the OTDP rejection of claims Appeal 2018-006825 Application 13/686,275 4 13–28 due to a lack of any argument by Appellant constitutes a new ground of rejection under 37 C.F.R. § 41.50(b). We first point out that Appellant has misstated the holding in our precedential Ex parte Moncla decision. Appellant errs by stating “a provisional non-statutory double patenting rejection need not be addressed in an Appeal Brief when the other rejections were reversed.” Request 4. The actual holding in Moncla is “[a]fter the filing of Appellants’ Brief . . . the Director and Appellants determined it would be in the best interest of the parties and the Federal Circuit to remand the case back to the USPTO and, accordingly, filed a “Joint Motion for Remand.” The Federal Circuit granted the motion . . . and the appeal is now before this expanded panel.” Moncla at 2. In the Order, the expanded panel determined “[t]he prior Decision by the Board reversed the Examiner’s rejections under 35 U.S.C. § 102 and § 103. The only remaining rejection is a provisional non- statutory double patenting rejection. We conclude that in this circumstance it was premature for the original Board panel to address the Examiner’s provisional rejection of the claims.” Moncla at 3 (emphasis added). One point of distinction, in contrast to the holding in Moncla, is that the rejection in this Appeal was determined to be non-provisional and not provisional, as discussed below. Further, this holding does not obviate the requirement that Appellant address each rejection on Appeal, or waive any such arguments against a particular rejection, but instead provides discretion to the Board as to how to proceed, in this particular circumstance. Our Consolidated Patent Rules governing Appeals require: Appeal 2018-006825 Application 13/686,275 5 Argument. The arguments of appellant with respect to each ground of rejection, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the Record relied on. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested (e.g., by claim number, statutory basis, and applied reference, if any). 37 C.F.R. 41.37(c)(1)(iv) (emphasis added). Thus, notwithstanding Appellant’s footnote (Appeal Br. 4, n.1) acknowledging the provisional OTDP rejection, Appellant presents no substantive argument with respect to this rejection, whether cast as provisional or non-provisional. Further, Appellant’s unsubstantiated assertion “[t]his rejection is not the subject of the present appeal” is not in accord with the Patent Appeal Rules which either require a substantive response to the rejection, or waiver of any argument against the rejection. See 37 C.F.R. 41.37(c)(1)(iv). If a rejection in the action from which Appeal is taken is not withdrawn by the Examiner, then the rejection is before us. Even assuming, arguendo, the provisional nature of the OTDP rejection had been preserved in our Decision, and that the Board, in its discretion, declined to reach the provisional OTDP rejection on the merits, we note the Manual for Patent Examining Procedure requires the identical outcome, i.e., recharacterizing the rejection as a non-provisional OTDP rejection, and requiring the filing of a Terminal Disclaimer. Appeal 2018-006825 Application 13/686,275 6 If a decision by the Patent Trial and Appeal Board does not include an opinion on a provisional nonstatutory double patenting rejection, and includes a reversal of all other grounds as to a claim rejected based on provisional nonstatutory double patenting and the applicant has not filed a proper terminal disclaimer, the examiner must act upon the provisional nonstatutory double patenting rejection. The examiner must first determine if any reference application used in the provisional nonstatutory double patenting rejection has issued as a patent. If the reference application has issued, the provisional rejection should be re-issued as a nonprovisional rejection and a terminal disclaimer should be required, for example, by using form paragraphs 8.33-8.39 as appropriate. See MPEP § 804, subsection II.B. MPEP § 1490(VI)(D)(2)(d). We note the Final Action containing the provisional OTDP rejection was mailed June 14, 2017, the Appeal Brief was filed November 9, 2017, the Reply Brief was filed June 20, 2018, and the reference patent issued as a patent on October 22, 2019. Although three years elapsed before our Decision in which a Terminal Disclaimer could have been filed to overcome either a provisional or non-provisional OTDP rejection, we find no Terminal Disclaimer was in the record before us when our Decision was mailed on June 26, 2020.2 A review of the current Application file shows Appellant filed a Terminal Disclaimer to overcome the OTDP rejection on June 26, 2020, the same day as our Decision was mailed, and the same day as the filing of this 2 The reference claims in copending application no. 14/023,534 relied upon in the OTDP rejection were issued in substantially similar form on October 22, 2019 in U.S. Patent 10,454,983. Appeal 2018-006825 Application 13/686,275 7 Request.3 Based upon the analysis above, we are not persuaded of error in our Decision regarding the non-provisional OTDP rejection. In response to Appellant’s assertion that our recharacterization of the OTDP rejection as non-provisional constituted a new ground of rejection, we determine that the mere ministerial conversion of the reference Application No. 14/023,534 to an issued patent, U.S. Patent 10,454,983, operated to convert the rejection from provisional to non-provisional, and therefore we did not rely upon any new factual findings regarding the substance of the rejection, or any new legal rationales.4 CONCLUSION We have considered all of the arguments timely raised by Appellant in the Request. Accordingly, while we have granted Appellant’s Request to the extent that we have reconsidered our Decision, the Request is denied with respect to reversing the Examiner’s OTDP rejection of claims 13–28. Our Decision is final for purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). 3 We leave it to the Examiner to determine the propriety of the Terminal Disclaimer filed June 26, 2020 for entry, and any subsequent action to be taken with respect to this rejection, e.g., withdrawal of the OTDP rejection if the Terminal Disclaimer is sufficient to be granted entry. 4 The requirements levied on the Examiner for setting forth an OTDP rejection, and for Appellant’s response to such a rejection are the same whether designated as provisional or non-provisional. See, generally, MPEP § 804 (Definition of Double Patenting). Appeal 2018-006825 Application 13/686,275 8 SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C § Basis/References Denied Granted 13–28 OTDP 13–28 Final Outcome of Appeal after Rehearing: DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 13–28 OTDP 13–28 13–15, 18, 21, 22, 25 102(b) Anticipation Errico 13–15, 18, 21, 22, 25 19–20, 26, 27, 28 102(b) Anticipation Bennett 19–20, 26, 27, 28 16, 23 103(a) Obviousness Errico, Fleischman 16, 23 17, 24 103(a) Obviousness Errico, Zhang 17, 24 Overall Outcome 13–28 DENIED