Ex Parte Beineke

Board of Patent Appeals and Interferences

Nov 14, 2008

10919902 (B.P.A.I. Nov. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WALTER F. BEINEKE
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Appeal 2007-4215
Application 10/919,902
Technology Center 1600
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Decided: November 14, 2008
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
RICHARD E. SCHAFER, ERIC GRIMES, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge GRIMES.

Opinion Concurring filed by Administrative Patent Judge LEBOVITZ, with
whom Chief Administrative Patent Judge FLEMING joins.

GRIMES, Administrative Patent Judge.

Appeal 2007-4215
Application 10/919,902

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered July 31,
2008 (“Decision”), which affirmed the rejection under 35 U.S.C. § 161. The
request for rehearing is denied.
DISCUSSION
Appellant argues that the conclusions reached in the Decision are not
supported by the evidence in the record (Req. Rhg. 2). Specifically,
Appellant argues that the Specification does not support the conclusion that
AFTO-2 was found in an uncultivated state (id. at 3-4); that Dr. Beineke’s
two declarations do not conflict (id. at 5); that the evidence shows that
AFTO-2 was cultivated because a lawn was cultivated (id. at 6, 7); and that
“[i]t is erroneous to state ‘…the specification itself provides evidence that
AFTO-2 was found no later than August 1994’” (id. at 8). Appellant also
argues that the Decision misinterpreted the requirements of the Plant Patent
Act (id. at 1) by requiring evidence of deliberate cultivation (id. at 6-7).
These arguments do not “state with particularity the points believed to
have been misapprehended or overlooked by the Board,” as required by
37 C.F.R. § 41.52. The essence of Appellant’s arguments is that he
disagrees with our interpretation of 35 U.S.C. § 161 and with the
conclusions that we reached based on the evidence of record. That is not a
proper basis for a Request for Rehearing. For an applicant dissatisfied with
the outcome of a Board decision, the proper course of action is to appeal, not
to file a Request for Rehearing to re-argue issues that have already been
decided. See 35 U.S.C. §§ 141, 145.
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Appeal 2007-4215
Application 10/919,902

Appellant’s Request for Rehearing does not point to any evidence of
record, or any legal authority, that we overlooked or misunderstood in
reaching the conclusions set forth in the Decision. We therefore decline to
revisit our earlier conclusions.

REHEARING DENIED

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Appeal 2007-4215
Application 10/919,902

LEBOVITZ, Administrative Patent Judge, with whom Chief Administrative
Patent Judge FLEMING joins, concurring.
We concur that the request for rehearing in this case is improper
because Appellant has not “state[d] with particularity the points believed to
have been misapprehended or overlooked by the Board” in the decision
entered July 31, 2008. See 37 C.F.R. § 41.52. Our concurrence, however,
does not incorporate nor extend to any other part of the Majority decision set
forth here or in their July 31, 2008 decision.

clj
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