Ex Parte 6991298 et al

Patent Trials and Appeals Board

May 29, 2013

95001028 - (O) (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,028 01/30/2008 6991298 201/1966US 5834
22822 7590 02/27/2014
LEWIS, RICE & FINGERSH, LC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
ST LOUIS, MO 63101
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/27/2014 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
____________

SHIMANO INC.,
Requester,

v.

Patent of COMPOSITECH, INC.,
Patent Owner and Appellant
____________

Appeal 2013-001717
Reexamination Control 95/001,028
Patent 6,991,298 B2
Technology Center 3900
____________

Jeffrey B. Robertson, Administrative Patent Judge.

ORDER REMANDING INTER PARTES REEXAMINATION UNDER
37 C.F.R. § 41.77(d) TO THE EXAMINER

Patent Owner submits a Response Pursuant to 37 C.F.R. § 41.77(b)(1)
in Reexamination (dated June 28, 2013) (“Request”) in response to the
PTAB Decision mailed May 29, 2013 in which we designated a new ground
of rejection (Decision 12-13, 18). Requester filed a Response Pursuant to
Appeal 2013-001717
Reexamination Control 95/001,028
Patent 6,991,298 B2

2
37 C.F.R. § 41.77(c) (dated July 9, 2013) (“Comments”) in response to
Patent Owner’s Request.
In the Decision, a new ground of rejection was set forth for claims 17-
30, 44-53, 58, and 101-114 under 35 U.S.C. 112, first paragraph as lacking
written description support for the term “generally continuous.” (Decision
12-13.) Patent Owner amended claims 17, 26, 30, 44, 45, 58, 101, 110, and
114, which are the independent claims subject to the new ground of rejection
to delete the term “generally” in order to overcome the rejection. (Request
47-48.) The Request therefore responds to the new ground of rejection and
includes “an amendment of the claims so rejected” pursuant to 37 C.F.R.
§ 41.77(b)(1). Accordingly, Patent Owner’s Request to Reopen Prosecution
is GRANTED.
Requester does not challenge Patent Owner’s amendments in the
Comments, but rather presents arguments addressing the presence of
duplicate claims and further states that certain claims are unpatentable over
prior art. (Comments 1-4.) As a result, the Examiner need not consider
Requester’s Comments as they are not responsive to Patent Owner’s
amendments to the claims.
This matter will be remanded to the Examiner for consideration of
Patent Owner’s Response Pursuant to 37 C.F.R. § 41.77(b)(1) and the new
ground of rejection of amended claims 17-30, 44-53, 58, and 101-114 under
35 U.S.C. § 112, first paragraph as lacking written description support.

GRANTED; REMANDED TO EXAMINER

Appeal 2013-001717
Reexamination Control 95/001,028
Patent 6,991,298 B2

3
PATENT OWNER:

Lewis, Rice & Fingersh, LC
Attn: Box IP Dept.
600 Washington Ave.
Suite 2500
St. Louis, MO 63101

THIRD PARTY REQUESTER:

David L. Tarnoff
Global IP Counselors, LLP
1233 Twentieth Street, NW
Suite 700
Washington, DC 20036