National Institute of Transplantation Foundation

Patent Trials and Appeals BoardJun 3, 2021

2020004328 (P.T.A.B. Jun. 3, 2021)

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. 14/134,342 12/19/2013 James Cicciarelli NITF-006-US 1063 89633 7590 06/03/2021 Brian Pangrle Pangrle Patent, Brand & Design Law, P.C. 3500 W Olive Ave 3rd Floor Burbank, CA 91505 EXAMINER DIBRINO, MARIANNE ART UNIT PAPER NUMBER 1644 NOTIFICATION DATE DELIVERY MODE 06/03/2021 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): brian@ppbdlaw.com docket@ppbdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JAMES CICCIARELLI, NORI KASAHARA, and NATHAN LEMP __________ Appeal 2020-004328 Application 14/134,342 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, TAWEN CHANG, and DAVID COTTA, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the decision entered March 24, 2021 (“Decision”) that (1) affirmed the Examiner’s written description rejection under 35 U.S.C. § 112(a) and (2) found that Appellant’s effort to appeal the Examiner’s reopening prosecution under MPEP § 1214.04 was not an appealable matter properly addressed to the PTAB, but rather was an issue that was petitionable to the Director. We deny the requested relief. Appeal 2020-004328 Application 14/134,342 2 DISCUSSION Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. 37 CFR § 41.52(a)(1). Written Description In the portion of the Request for Rehearing that specifically addresses the written description rejection under 35 U.S.C. § 112(a) affirmed in our Decision dated Mar. 24, 2021, Appellant does not identify any point regarding the rejection itself that was misapprehended or overlooked by the Board (see Req. 8–9). Instead, Appellant reiterates arguments regarding whether the Examiner committed prejudicial error by reopening prosecution in the Non-Final Rejection mailed July 31, 2018 that was signed by the Director of TC 1600 consistent with MPEP § 1214.04 (see id.; Non-Final Rej. 7/31/2018 at 9). Thus, Appellant does not identify anything overlooked, errors, or misapprehensions regarding our affirmance of the written description rejection. Reopening of Prosecution by Examiner Appellant contends our “Decision misapprehended or overlooked Appellant’s arguments and cited case law and petition decisions as to the operation of 37 CFR 1.198, particularly as to the rejection under 35 USC Appeal 2020-004328 Application 14/134,342 3 103 and the underlying requirement as to ‘sufficient cause’, which, per case law, carries a strict and heavy burden” (Req. 2). We find these arguments unpersuasive for several reasons. First, [t]here are a host of various kinds of decisions an examiner makes in the examination proceeding— mostly matters of a discretionary, procedural or nonsubstantive nature— which have not been and are not now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). In this case, the determination of whether the Examiner’s decision to reopen prosecution was improper is not related to the merits of a rejection, but rather is a procedural issue that is properly addressed by petition, not appeal. None of Appellant’s cited cases represent decisions by either the PTAB, a predecessor to the PTAB, or by a reviewing court. Ex Parte Goldsmith was decided by an Assistant Commissioner of the Patent Office and the issue of sufficient cause in that case did not revolve around whether an Examiner had proper authority to reopen but rather whether an Applicant may file an amendment after a final decision on appeal. See Ex Parte Goldsmith, 58(8) Official Gazette 1092 (Feb. 23, 1892). Similarly, the cited decisions by Deputy Commissioner Stephen Kunin and then Deputy Commissioner Andrew Hirshfeld represent petition decisions, not decisions by the Board (see Req. 5–6). Moreover, the decision by then Deputy Commissioner Hirshfeld expressly recognizes an examiner’s authority to reopen prosecution using proper procedure and authorization from USPTO management, explaining: Appeal 2020-004328 Application 14/134,342 4 The USPTO’s reviewing courts have specifically held that even a court decision reversing a rejection does not preclude further examination of the application by the USPTO subsequent to examination provided for in 35 U.S.C. §§ 131 and 132 and the BPAI and court review provided for in 35 U.S.C. §§ 134 and 141. See Jeffrey Mfg. Co. v Kingsland, 83 USPQ 494, 494 (D.C. Cir. 1949), see also In re Gould, 213 USPQ 628, 629 (CCPA 1982) (USPTO can always reopen prosecution in an application under an ex parte court appeal once it regains jurisdiction over the application); In re Arkley, 172 USPQ 524, 527 (CCPA 1972) (the USPTO is free to make such other rejections as it consider appropriate subsequent to a court decision reversing a rejection); In re Fisher, 171 USPQ 292, 293 (CCPA 1971) (reversal of rejection does not mandate issuance of a patent); In re Ruschig. 154 USPQ 118, 121 (CCPA 1967) (subsequent to a court decision reversing a rejection, the USPTO may reopen prosecution and reconsider previously withdrawn rejections that are not inconsistent with the decision reversing the rejection); In re Citron, 140 USPQ 220, 221 (CCPA 1964) (following a decision reversing a rejection of claims, the USPTO has not only the right but the duty to reject claims deemed unpatentable over new references). Accordingly, it is well established that if there is any substantial, reasonable ground within the knowledge or cognizance of the Director why the application should not issue, the Director has the authority, much less the duty, to refuse to issue the application. See In re Drawbaugh, 9 App. D.C. 219, 240 (D.C. Cir. 1896). (Petition Dec. in US 11/397,977, mailed Aug. 13, 2012). Second, the Examiner followed the proper procedure regarding reopening and entering new grounds of rejection. Under MPEP § 1214.04, the Examiner may request “the Technology Center (TC) Director . . . for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC . . . Director’s approval is placed on the action reopening Appeal 2020-004328 Application 14/134,342 5 prosecution.” Here, the TC 1600 Director’s signature attests that he approved reopening prosecution consistent with MPEP § 1002.02(c)(1) (see Non-Final Act. 7/31/2018 at 9). Third, we do not find the determination by the Examiner, as approved by the TC director, constitutes prejudicial error as regards the merits of the rejection under 35 U.S.C. § 112(a), written description, which are appealable (see Req. 7–8; Dec. 3/24/2021 at 7–18). As to whether the Examiner had “sufficient cause” to reopen, that determination is procedural and the proper challenge to that determination is by way of petition, not appeal. It has long been part of USPTO procedure that Examiners may alter their positions during prosecution based on the evidence before them: There is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view. The life of a patent solicitor has always been a hard one. In re Ruschig, 379 F.2d 990, 993 (CCPA 1967). Here, where the procedures were duly complied with, there is no legal ground on which Appellant may properly appeal the TC Director’s decision to reopen prosecution to the PTAB. CONCLUSION We have reviewed the original opinion in light of Appellant’s request, but we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, Appellant’s request is denied with respect to making any modifications to the decision. Appeal 2020-004328 Application 14/134,342 6 Outcome of Decision on Rehearing: Claim 35 U.S.C. § Basis Granted Denied 1–6 112(a) Written Description 1–6 Final Outcome of Appeal after Rehearing Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–6 103(a) Cicciarelli, Clatworthy, Barocci 1–6 1–6 112 Written Description 1–6 Overall Outcome 1–6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED