90011596 (P.T.A.B. Jan. 30, 2015)

Ex Parte 6315921 et al

Patent Trial and Appeal BoardJan 30, 2015

90011596 (P.T.A.B. Jan. 30, 2015)

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. 90/011,596 03/24/2011 6315921 247097-716USPB 4091 56356 7590 01/30/2015 PACTIV CORPORATION c/o NIXON PEABODY LLP 300 S. Riverside Plaza 16TH FLOOR CHICAGO, IL 60606 EXAMINER JASTRZAB, KRISANNE MARIE ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/30/2015 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 PACTIV LLC Patent Owner and Appellant ____________ Appeal 2014-003880 Reexamination Control 90/011,596 US 6,315,921 B1 Technology Center 3900 ____________ Before LORA M. GREEN, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. REQUEST FOR REHEARING Patent Owner requests rehearing under 37 C.F.R. § 41.52 of the Decision on Appeal entered June 30, 2013 (“Decision”) on the ground that the Board provided no explanation for its decision not to apply Belkin Int’l Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) to this ex parte reexamination. Request for Rehearing filed August 27, 2014, 2-6. Appeal 2014-003880 Reexamination Control 90/011,596 Patent 6,315,921 B1 2 In the Appeal, Patent Owner had argued that a substantial new question (SNQ) of patentability had been found for a specific combination of publications, but subsequently the Examiner had made additional rejections which were not part of the specific SNQs of patentability. Appeal Br. 10. Under, Belkin – an appeal of a final agency decision in an inter partes reexamination – Patent Owner argued that once the SNQ of patentability is overcome, “further rejection of those claims based on patentability exceeds the statutory authority granted to the PTO under the reexamination statute.” Id. at 11. Patent Owner requested that the case be remanded to the Examiner “with an order for allowance of claims 3-5, 11, 12 and 20-28 in their original form since in the Final Office Action these claims were not rejected based on a SNQ of patentability.” Id. at 13. Findings of Fact The following findings of fact are relevant to the new rejections set forth during the ex parte reexamination proceeding before the Examiner: FF1. In response to a Request for Ex Parte Reexamination, the Examiner determined that (1) Komatsu as evidenced by the McKedy declaration; (2) Yoshikawa ’503 as evidenced by the McKedy declaration; and (3) Yoshikawa ’652 and McKedy ’375 patent raised substantial new questions of patentability as to original claims 1-12. Order Granting Request for Ex Parte Reexamination 3, 4, and 5 (June 4, 2011). FF2. In the Non-Final Office action of March 22, 2012, the Examiner set forth rejections based on the publications on which ex parte reexamination was ordered, but also set forth rejections based on newly cited Appeal 2014-003880 Reexamination Control 90/011,596 Patent 6,315,921 B1 3 Sakai, GB ’853, and Hamon which were not part of the original SNQ of patentability. Non-Final Office Action 5-7 and 8-9. Several of these new rejections did not involve any of the publications that were the basis of the original SNQ of patentability. Id. FF3. In response to the Non-Final Office Action, Patent Owner added new claims 13-28. Amendment and Response to Non-Final Office Action 8 (May 18, 2012). Patent Owner did not challenge the Examiner’s citation to Sakai and GB ’853 as outside the scope of the SNQ of patentability, but instead specifically addressed the publications as they pertained to the grounds of rejection. Id. at 19. FF4. A subsequent supplemental amendment was filed by Patent Owner in which the Belkin issue was raised. Supplemental Amendment 10- 12 (November 12, 2012). Patent Owner argued that 10 rejections were set forth by the Examiner, but 8 of the rejections were not part of the specific SNQ. Id. at 12. These rejections involved, inter alia, Sakai, GB ’853, and Hamon. Id. Belkin was published October 2, 2012 and, therefore, could not have been addressed in the response filed on May 18, 2012. FF5. The Examiner entered a Final Rejection, but did not enter the supplemental amendment or address the Belkin issue because the supplemental amendment was not timely filed and was not considered by the Examiner to meet any of the circumstances under which the rules should be suspended. Final Rejection 29-30 (November 19, 2012). Appeal 2014-003880 Reexamination Control 90/011,596 Patent 6,315,921 B1 4 FF6. Patent Owner did not petition the Director under 37 C.F.R. § 1.181 to request entry of the amendment.1 FF7. Although the Examiner did not address Belkin in the Final Rejection, the Examiner considered the issue in the Answer. Answer 4-8 Discussion In the Decision, it was explained that Belkin involved an inter partes reexam proceeding which invokes a different statutory and regulatory scheme than ex parte reexamination. Decision 6. Indeed, Belkin involved an appeal by the Third Party Requester of the Director’s decision that certain prior art did not raise a substantial new question of patentability, a factual situation that cannot arise in ex parte reexamination. In addition, to the extent that Belkin may be relevant to ex parte reexamination, Belkin addressed the ability of the Director to make new grounds of rejection during the course of a reexamination. The Federal Circuit stated: Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) (“On his own initiative, and any time, the Director may determine whether a substantial new question of 1 Procedurally, under 75 Fed. Reg. 36357 which became effective June 25, 2010, “[i]n order to preserve the right to have the BPAI [now the PTAB] review of the SNQ issue, a patent owner must first request reconsideration of the SNQ issue by the examiner.” Since Patent Owner raised the Belkin issue once again in the Appeal Brief, and the Examiner responded, it is moot that the non-entered amendment is not part of the record. Appeal 2014-003880 Reexamination Control 90/011,596 Patent 6,315,921 B1 5 patentability is raised by patents and publications discovered by him . . . .”). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. Belkin, 696 F.3d at 1383. Importantly, Patent Owner does not contend that the rejections applied by the Examiner that were absent from the Order Granting Ex Parte Reexamination do not raise a substantial question of patentability. Accordingly, we are not persuaded that we misapprehended or overlooked any points identified by Patent Owner in the Decision. REHEARING DENIED Appeal 2014-003880 Reexamination Control 90/011,596 Patent 6,315,921 B1 6 peb PATENT OWNER: PACTIV CORPORATION C/O NIXON PEABODY LLP 300 S. Riverside Plaza, 16th Floor Chicago, IL 60606 THIRD PARTY REQUESTER: Michael J. Didas HARTER SECREST & EMERY LLP 1600 Bausch & Lomb Place Rochester, NY 14604-2711