7272021 et al.

Patent Trials and Appeals Board

Oct 11, 2019

95001637 - (R) (P.T.A.B. Oct. 11, 2019)

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.
95/001,637 05/31/2011 7272021 X43170 1997
7055 7590 10/11/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/11/2019 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
____________

VICOR CORPORATION,
Requester,

v.

SYNQOR, INC.,
Patent Owner.
____________

Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

2
Patent Owner requests rehearing (Patent Owner’s Request for
Rehearing, dated March 20, 2019, “Req. Reh’g.”) of our Decision on
Remand entered February 20, 2019 (“Decision”), in which we maintained
our affirmance of the Examiner’s rejection of the following claims of U.S.
Patent 7,272,021 B2 (“the ’021 patent”): claims 1, 9, 15, 21, 24, 26, 31, 39,
45, and 47 under 35 U.S.C. § 102(b) as anticipated by Steigerwald ’090,
claims 22, 23, 25, and 27–30 under 35 U.S.C. § 103(a) over
Steigerwald ’090 and the knowledge of one of ordinary skill in the art,
claim 49 under 35 U.S.C. § 103(a) over Steigerwald ’090 and Pressman, and
claim 50 under 35 U.S.C. § 103(a) over Steigerwald ’090, Pressman, and
APA. Decision 9.
Patent Owner now informs us that the ’021 patent “expired in
January 2018, well before the Board issued its February 20, 2019 Decision
on Remand,” that “claims 49 and 50 . . . were newly added during the
reexamination proceeding,” and, as such, claims 49 and 50 should be
canceled. Req. Reh’g. 1, 3–4. We agree with Patent Owner.
We also note, under the circumstances and in accordance with the
affirmance by the Federal Circuit of Rejections I1 and II,2 that claims 1, 9,
15, 21–31, 39, 45, and 47 should also be canceled.

1 Claims 1, 9, 15, 21, 24, 26, 31, 39, 45, and 47 are anticipated by
Steigerwald ’090. Vicor Corp v. Synqor, Inc., 869 F.3d 1309, 1319, 1324
(Fed Cir. 2017).
2 Claims 22, 23, 25, and 27-30 are obvious over Steigerwald ’090 in view of
the knowledge of a person skilled in the art. Vicor Corp v. Synqor, Inc., 869
F.3d 1309, 1319, 1326 (Fed Cir. 2017).
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

3
Patent Owner argues that “[t]he Board’s Decision on Remand should
be vacated” because Patent Owner was supposedly not given “an
opportunity to submit briefing.” Req. Reh’g. 1. We disagree with Patent
Owner for at least the reasons set forth by Requester. Requester Comments
to Patent Owner Rehearing Request (3PR Comments) 5–7.
In addition to those reasons, which we adopt, Patent Owner does not
explain persuasively why an alleged lack of opportunity to file a brief would
necessitate vacating our previous decision. More importantly, we are not
persuaded by Patent Owner’s argument (provided in Patent Owner’s
briefing) at least because Patent Owner has been given an opportunity to
brief the issue and has, in fact, filed a response (i.e., Patent Owner’s Request
for Rehearing).
Patent Owner does not adequately explain how the filing of the
present request for rehearing does not constitute an opportunity to file a brief
explaining what, if anything, the panel overlooked. For at least this
additional reason and given that Patent Owner has filed a brief, we cannot
agree with Patent Owner that Patent Owner did not have an opportunity to
file a brief, even assuming that whether or not Patent Owner had an
opportunity to file a brief is somehow pertinent to the question of whether
our previous decision should be vacated or not.
Patent Owner does not provide alternative reasons as to why the
drastic step of vacating our previous decision would be necessary.
Furthermore, we agree with Requester that Patent Owner has not provided a
sufficient reason to vacate our previous decision. 3PR Comments 3–5.
Appeal 2014-007587
Reexamination Control 95/001,637
Patent 7,272,021 B2

4
Thus, we grant Patent Owner’s request for rehearing to the extent that
we remand this matter to the Examiner to issue a Reexamination Certificate.
All other aspects of the Decision remain unchanged.

GRANTED-IN-PART