Ex Parte Becker

Board of Patent Appeals and Interferences

Jul 7, 2011

10975760 (B.P.A.I. Jul. 7, 2011)

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.
10/975,760 10/28/2004 Burkhard Becker L0199.0010 7520
38881 7590 07/08/2011
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2186
MAIL DATE DELIVERY MODE
07/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BURKHARD BECKER
____________________

Appeal 2009-007069
Application 10/975,7601
Technology Center 2100
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant has filed a Request for
Rehearing alleging a misapprehension or oversight by this Board in a
Decision on Appeal mailed January 7, 2011. In that Decision the Board
affirmed the Examiner’s rejection of claims 1 to 11 and 14 to 26.

1 This Application was filed on October 28, 2004. It is a continuation of
PCT/DE03/01170, filed April 9, 2003. The real party in interest is Infineon
Technologies, AG.
Appeal 2009-007069
Application 10/975,760

2
ANALYSIS
In a Request for Rehearing received March 1, 2011, Appellant
contends that “the Board Decision failed to consider Appellant[’s]
arguments that the prior art of record fails to anticipate dependent claim 3.”
(RR 1, bottom).
We have considered Appellant’s arguments presented in Appellant’s
Brief and Reply Brief. We hereby amend the Board Decision mailed
January 7, 2011 by adding an indication that the rejection of claim 3 is not
found to be in error for the reasons stated by the Examiner in the Answer.
(Ans. 5, 6, 16 bottom, 17). As indicated, the reference Lou’s decision to
store is based on the decipherability of the packet, which is fairly considered
quality information of the data block version, as claimed.
Appellant also presents supplemental arguments in the Request for
Rehearing concerning claim 3. (RR 2, middle). Such arguments at this
stage of the prosecution are inappropriate and will not be considered. (37
C.F.R. § 41.52 (a)(1)).
CONCLUSION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing. We have modified the original Opinion by adopting as our own
the Examiner’s rationale for rejecting claim 3 in the Answer. While we have
modified our analysis in the Opinion, we have maintained our decision to
affirm the Examiner’s obviousness rejection of claims 1-11 and 14-26.
This Decision on Request to Rehearing has substantially modified the
original Opinion as to become a new Opinion. Pursuant to 37 C.F.R.
§§ 41.50(b) and 41.52(a)(1), we treat this new Opinion under the same
procedures as if it contained a new ground of rejection.
Appeal 2009-007069
Application 10/975,760

3
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

REQUEST FOR REHEARING-GRANTED
37 C.F.R. § 41.50(b)

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