95002050 (P.T.A.B. May. 31, 2016)

Ex Parte 7237287 et al

Patent Trial and Appeal BoardMay 31, 2016

95002050 (P.T.A.B. May. 31, 2016)

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. 95/002,050 07/20/2012 7237287 7175-222142 9973 69781 7590 05/31/2016 Barnes & Thornburg LLP (Hill-Rom) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/31/2016 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) MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. EXAMINER ART UNIT PAPER NUMBER DELIVERY MODE 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ STRYKER CORPORATION Stryker and Respondent v. HILL-ROM SERVICES, INC. Hill-Rom and Appellant ____________ Appeal 2015-004962 Reexamination Control 95/002,050 Patent 7,237,287 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and ANDREW J. DILLON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING This is a Request for Rehearing (Req. Reh’g”) of the Decision on Appeal entered August 31, 2015 (“the 4962 Decision”). In the 4962 Decision, we affirmed the rejection of all the claims as either anticipated by, or obvious in view of, the cited prior art publications. In reaching the decision, we construed the term “communication network” recited in all the claims. 4962 Decision 6–7. Because the patent had expired, we applied the claim construction principles enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the proper standard used to construe the Appeal 2015-004962 Reexamination Control 95/002,050 Patent 7,237,287 B2 2 claims of an expired patent during a reexamination proceeding. Id. at 5. The patent expired after prosecution had been closed by the Examiner. See Submission by Patent Owner under 37 C.F.R. § 1.555 (filed Aug. 3, 2015). Consequently, the Examiner did not construe the claims under Phillips, but rather applied the broadest reasonable interpretation to the claims (In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012)). Req. Reh’g 2. In the Request for Rehearing, Patent Owner contends that they should be provided the opportunity to respond to the new claim construction standard because “[i]n applying a different claim construction standard, the Board fundamentally changed the rationale on which the rejections were based, and, as a result, the Board was required to issue new grounds of rejection.” Id. In determining whether a new ground of rejection should be made, “[t]he ultimate criterion is whether the appellant has had before the PTO a ‘fair opportunity to react to the thrust of the rejection.’” Rambus, Inc. v. Rea, 731 F.3d 1248, 1255–56 (Fed. Cir. 2013). In this case, Patent Owner has not explained how the “thrust” of the rejection was changed by applying the principles enunciated in Philips to the interpretation of the phrase “communication network.” For example, Patent Owner has not pointed to new facts or new rationales, not previously raised by the Examiner, which could constitute a basis for making a new ground of rejection. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). Patent Owner has not identified an issue raised by the claim construction in the 4962 Decision which they had not had the “opportunity to react to.” We decline to apply a Appeal 2015-004962 Reexamination Control 95/002,050 Patent 7,237,287 B2 3 per se rule that, when a different standard of claim construction is applied, a new ground of rejection is automatically warranted. REHEARING DENIED HILL-ROM: Scott M. Simmonds BARNES & THORNBURG LLP (HILL-ROM) 11 S. Meridian Street Indianapolis, IN 46204 THIRD PARTY STRYKER: Robert A. Surrette MCANDREWS HELD & MALLOY, LTD 500 West Madison Street Suite 3400 Chicago, IL 60661