Ex Parte Bushman

Patent Trial and Appeal Board

Sep 14, 2016

13872001 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/872,001 04/26/2013
97149 7590 10/05/2016
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
Nathan S. Bushman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
S l 430.10002US03 9605
EXAMINER
HUANG, MIRANDA M
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
10/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@mabr.com
info@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANS. BUSHMAN
Appeal2015-005014
Application 13/872,001
Technology Center 2100
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(l)
on September 16, 2016 ("Request"), seeking reconsideration of part of our
Decision on Appeal of September 16, 2016 ("Decision"). In that Decision,
we affirmed the Final Rejection of claims 1-20 on the ground of non-
statutory obviousness-type double patenting over claims 1-19 of U.S. Patent
No. 8,190,574. We have considered the argument presented by Appellant
and are persuaded that we overlooked the terminal disclaimer filed relative
to the '574 patent. As such, we grant Appellant's Request for Rehearing and
modify our Decision to reflect a reversal instead of an affirmance.
ISSUE & ANALYSIS
The Examiner rejected certain claims of the present application on the
ground of non-statutory obviousness-type double patenting over U.S. Patent
Appeal2015-005014
Application 13/872,001
ApplicationNo.13/481,671 ("the '671 application"). Final Act. 4. The
Examiner also rejected claims 1-20 on the ground of non-statutory
obviousness-type double patenting over claims 1-19 of U.S. Patent No.
8,190,574 ("the '574 patent"). Final Act. 4. Appellant appealed both double
patenting rejections, stating that a terminal disclaimer had been filed for the
'671 application and the '574 patent. App. Br. 9.
In our Decision, we found a terminal disclaimer for the '671
application was filed on July 31, 2014, and mooted that double patenting
rejection, but we affirmed the double patenting rejection for the '574 patent
because we did not see a separate terminal disclaimer for the '574 patent.
Decision 3.
In the Request, "Appellants note that although only a single terminal
disclaimer was filed on July 31, 2014, .... this single terminal disclaimer
actually applies to both U.S. Application No. 13/481,671 and U.S. Patent
No. 8,190,574." Request 1-2. Appellant is correct. While U.S. Application
No. 13/481,671 is listed in the middle of the first page of the terminal
disclaimer, U.S. Patent No. 8,190,574 is also listed on the first line of the
second page. Thus, the same terminal disclaimer moots both rejections.
DECISION
For the reasons above, we grant Appellant's Request for Rehearing.
We also modify our Decision of September 16, 2016, and find the double
patenting rejection based on the '574 patent moot. Because that double
patenting rejection was the only part of the Examiner's office action that we
affirmed and all other rejections have now been mooted or reversed, we
designate our modified Decision as a reversal.
REHEARING GRANTED
2