95002001 (P.T.A.B. Feb. 27, 2017)

Ex Parte 8067381 et al

Patent Trial and Appeal BoardFeb 27, 2017

95002001 (P.T.A.B. Feb. 27, 2017)

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. 95/002,001 05/31/2012 8067381 028284.0105X7US 2667 127044 7590 02/27/2017 Porzio, Bromberg & Newman P.C. 1200 New Hampshire Ave., NW Suite 710 Washington, DC 20036 EXAMINER PONNALURI, PADMASHRI ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 02/27/2017 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 ____________ WOODBOLT DISTRIBUTION, LLC. Requester and Respondent v. NATURAL ALTERNATIVES INTERNATIONAL, INC. Patent Owner and Appellant ____________ Appeal 2015-000225 Reexamination Control 95/002,001 Patent 8,067,381 B1 Technology Center 3900 ____________ Before, RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Patent Owner requests rehearing of the Decision on Appeal entered July 17, 2015 (“DOA”) in the above-identified reexamination of U.S. Pat. No. 8,067,381 B1 (“the ’381 patent”). The ’381 patent claims benefit of earlier filed applications, identified in the previous decision as the seventh, sixth, fifth, fourth, and so on, applications. DOA 6. In the Decision, the ’381 patent was denied benefit to Appeal 2015-000225 Reexamination Control 95/002,001 Patent 8,067,381 B1 2 Application No. 10/209,169 (“the fourth application”) and its ancestors because priority to it has been deleted by amendment during the pendency of the continuation application, Application No. 10/717,271 (“the fifth application”), from which the ’381 patent arose. Id., 8–15. As a consequence, the ’381 patent was given the earliest filing date of Apr. 10, 2003, the date when a provisional application was filed, which is the only application to which the fifth application, as amended, claimed benefit. Id., 6, 15. In the Request for Rehearing, Patent Owner repeats its argument that priority vested at the time the sixth application was filed and that “[a]ny subsequent amendment of priority would only affect that individual application, i.e., the fifth application.” Req. Reh’g 4. Patent Owner further contends that the sixth application, to which the ’381 patent claims benefit (from the chain starting with the seventh application), “retained its priority to the entire patent family because it was filed with a complete priority chain prior to the amendment of the priority chain of the fifth application.” Id. Because this argument was already addressed in the Decision, we see no need of additional analysis. However, we further note a peculiarity that arises if Patent Owner’s argument for priority is accepted. The fifth application matured into U.S. Pat. No. 7,504,376. DOA 6. U.S. Pat. No. 7,504,376 claims the benefit of only provisional application 60/462,238, filed Apr. 10, 2003. See U.S. Pat. No. 7,504,376 under “Related U.S. Application Data.” However, on the other hand, Patent Owner in this proceeding asserts the 10/717,217 application “(the fifth application”) is a CIP of the 10/209,169 application (“the fourth application”). DOA 6. 10/717,217, therefore, for one purpose is a CIP and, for another purpose, 10/717,217 is not a CIP and only claims benefit to a provisional application. We Appeal 2015-000225 Reexamination Control 95/002,001 Patent 8,067,381 B1 3 are not aware of a statutory provision which would allow an application to invoke two different claims to priority under 35 U.S.C. §§ 119 and 120 depending upon in which chain of applications it appears. DENIED Appeal 2015-000225 Reexamination Control 95/002,001 Patent 8,067,381 B1 4 For PATENT OWNER: PORZIO, BROMBERG & NEWMAN P.C. 1200 New Hampshire Ave., NW Suite 710 Washington, DC 20036 For THIRD PARTY REQUESTOR Barry Evans LUCAS & MERCANTI, LLP 30 Broad Street 21st Floor New York, NY 10004