Ex Parte Choo et al

Board of Patent Appeals and Interferences

Sep 21, 2009

10878395 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAE-HO CHOO
and SANG-UK JUNG
____________

Appeal 2008-005893
Application 10/878,395
Technology Center 2800
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Decided: September 21, 2009
____________

Before JAMES T. MOORE, ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, and BRADLEY R. GARRIS, ROMULO H.
DELMENDO, and JEFFREY B. ROBERTSON, Administrative Patent
Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration of our Decision of
December 10, 2008 (“Decision”) wherein we entered a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) rejecting claims 56-62 under 35
Appeal 2008-005893
Application 10/878,395

U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Appellants contend that the rejection should be withdrawn because the
Board misapprehended or overlooked that the limitation “exposing the
sealant to an ultraviolet ray to partially harden the sealant” was presented in
a preliminary amendment that was filed on the same day as the Application,
June 29, 2004, and therefore cannot be “new matter.” (Request for
Rehearing “Request,” 2-3). Appellants argue that the claim limitations do
not constitute “new matter” and were introduced to correct a translational
error, where “ultraviolet ray” was mistranslated from the Korean priority
document as “infrared ray.” (Request 3-4). Appellants cite to In re Oda,
443 F.2d 1200 (CCPA 1971) to support the position that the translational
error was manifest and caused by a clerical error, such that correction
thereof should not be considered “new matter.” (Id.).
We have reviewed the panel’s Decision in light of the arguments
presented by Appellants in the Request. However, we are not persuaded that
the panel’s Decision was in error. Although the preliminary amendment
introducing “ultraviolet ray” into the claims was present on the day the
present Application was filed, the present Application claims to be a
divisional of Application No. 10/602,054, which is a divisional of
Application No. 09/838,385, now U.S. Patent 6,657,701. Neither Parent
Application discloses “ultraviolet ray.” In addition, Appellants have not
presented any objective evidence that the change from “infrared” to
“ultraviolet” was a result of a translational error.1

1 It has not escaped our attention that neither Parent Application has been
amended to change “infrared” to “ultraviolet” and Application No.
2
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Application 10/878,395

Moreover, Appellants did not file a new Inventor’s Declaration
referring to the preliminary amendment with the present Application, but
instead rely on the Declaration filed in grandparent Application No.
09/838,385. Thus, the panel’s rejection is consistent with the guidance
provided by the Manual of Patent Examining Procedure (MPEP), which
states: “[w]here a copy of the oath or declaration from a prior application
was filed in a continuation or divisional application, if the examiner
determines that new matter is present relative to the prior application, the
examiner should so notify the applicant in the next Office action.” MPEP §
201.06(c)(III) [R-2] (8th Ed. May, 2004). See also MPEP § 714.01(e) [R-2]
(8th Ed. May, 2004). Accordingly, based on the record before us, the
presence of “ultraviolet” instead of “infrared” constitutes new matter relative
to the parent and current applications.
Further, Appellants’ reliance on In re Oda is misplaced. In Oda, the
appellants provided affidavit evidence showing that a skilled chemist would
have recognized that “nitrous acid” should have been “nitric acid” in view of
the specific gravity disclosed in the Specification, and the general
knowledge of the skilled chemist of nitration procedures. 443 F.2d at 1205-
06. The Appellants in Oda also provided a reissue oath stating that the term
“nitrous” was a translational error. In the present Request, by contrast,
Appellants have not directed our attention to any evidence on record tending
to show that one skilled in the art would have appreciated that the existence
of “infrared” in the Specification was a manifest error and that changing
“infrared” to “ultraviolet” would be how to correct it. See Oda, 443 F.2d at
10/602,054 contains a claim (although withdrawn from consideration)
reciting “infrared rays.” (Claim 72).
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Appeal 2008-005893
Application 10/878,395

1206. Ex Parte Bondiou, 132 USPQ 356, 358 (Bd. App. 1961) (changing
disclosure from “four hours” to “four days” not permitted because it
introduced new matter under 35 U.S.C. §132).
As was noted in the Decision, Appellants did not incorporate by
reference the Korean priority document as of the filing date of the
Application.2 Incorporating the Korean priority document by reference after
the filing date would be considered new matter. See MPEP § 201.06(c)(IV)
[R-2] (8th Ed. May, 2004). Thus, without a specific incorporation by
reference present on the filing date of the application, the Korean priority
document is not available to correct errors in the U.S. Application. See Ex
Parte Bondiou, supra, and MPEP § 2163.07[R-1] (II) (8th Ed., February,
2003).3
In addition to requesting that the rejection be withdrawn, Appellants
also request the prosecution be reopened to either furnish a supplemental
Declaration or to correct the Specification. As was stated on page 11 of the
Decision, Appellants had the option to reopen prosecution in response to the

2 We note that the incorporation of the Korean priority document on January
5, 2005 discussed on pages 9 and 10 of the decision refers to Related
Application No. 11/028,642, which in addition to being filed after the filing
date of the present Application, is not in the direct priority chain of the
present Application. (See App. Br. 1).
3 MPEP § 2163.07 (II) [R-1] recites in part:
[w]here a foreign priority document under 35 U.S.C. 119 is of record
in the U.S. application file, applicant may not rely on the disclosure of
that document to support correction of an error in the pending U.S.
application . . . [t]his provision does not apply where the U.S.
application explicitly incorporates the foreign priority document by
reference.
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Appeal 2008-005893
Application 10/878,395

new ground of rejection to introduce new evidence as set forth in 37 C.F.R.
§ 41.50(b), which states:
When the Board makes a new ground of rejection, 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. The new ground of rejection
is binding upon the examiner unless an amendment or new
evidence not previously of record is made which, in the opinion
of the examiner, overcomes the new ground of rejection stated
in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

37 C.F.R. § 41.50(b) (2008).
Appellants elected to request rehearing based upon the same record
rather than reopen prosecution. Thus, Appellants waived the right to further
prosecution before the Examiner. In re Greenfield, 40 F.2d 775 (CCPA
1930). However, Appellants are not precluded from submitting additional
evidence as part of a request for continued examination under
37 C.F.R. § 1.114.
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Appeal 2008-005893
Application 10/878,395

In view of the foregoing, Appellants’ request for rehearing is granted
to the extent indicated above, BUT IS DENIED WITH RESPECT TO
MAKING ANY CHANGES TO THE OUTCOME of the Decision.

REQUEST FOR REHEARING DENIED

tc

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