Ex Parte Cochran et al

Patent Trials and Appeals Board

Jun 13, 2016

13667059 - (R) (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/667,059 11102/2012
25287 7590 06/14/2016
GEORGE LAWRENCE BOLLER
P.O. Box 530518
LIVONIA, MI 48153
FIRST NAMED INVENTOR
Gary D. Cochran
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.
RBOlCIPCONT 5159
EXAMINER
ROGERS, DAVID A
ART UNIT PAPER NUMBER
2856
MAILDATE DELIVERY MODE
06/14/2016 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
Ex parte GARY D. COCHRAN,
RUDOLPH BERGSMA, DECEASED,
ROSEMARY BERGSMA, LEGAL REPRESENTATIVE,
and ROSEMARY BERGSMA
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Application 13/667,059
Technology Center 2800
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON REHEARING
The Appellants request rehearing of a DECISION ON APPEAL dated April
1, 2016 ("Decision"), sustaining the rejection of claims 1-20 under 35 U.S.C.
§ 102(b) as anticipated by Cochran et al. 1
A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
1 US 2005/0139003 Al, published June 30, 2005 (hereinafter "Cochran").
Cochran is the pre-grant publication of Application 11/052,155, filed February 7,
2005 (hereinafter the "Cochran Application").
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Application 13/667,059
the briefs before the Board and evidence not previously relied on in the briefs are
not permitted in a request for rehearing except as permitted by 37 C.F.R.
§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(l) (2014).
For the reasons set forth below, the request is DENIED.
I.
In the Request for Rehearing, 2 the Appellants contend that the Board erred
by not deciding "whether the publication of the Cochran Application is or is not
valid prior art under 35 U.S.C. § 102(b) with respect to the application on appeal
here." Request 4. At the center of the Request is the issue of whether the Cochran
Application was abandoned prior to the filing of the instant Application.
II.
The following facts are supported by a preponderance of the evidence.
(1) Application 11/052, 155 ("Cochran Application ") was published as
US 2005/0139003 on June 30, 2005 ("Cochran").
(2) A Final Office Action was entered in the Cochran Application on
November 15, 2006, rejecting claims 3-5, 7, and 11-19 and objecting to claim 8
"as being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of the base claim and
any intervening claims" (at 2, 12).
(3) A Notice of Appeal and an Appeal Brief were filed in the Cochran
Application on February 14, 2007.
(4) The Notice of Appeal filed on February 14, 2007, stated that
"Applicant appeals from a Final Rejection of Claims 3, 4, 5, 7, 11, 12, 13, 14, 15,
16, 17, 19, dated 15 November 2006."
2 Hereinafter "Request."
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Application 13/667,059
(5) The Appeal Brief filed on February 14, 2007, identified the "[c]laims
being appealed" as "3, 4, 5, 7, 11, 12, 13, 14, 15, 16, 17, 18, 19" (at 2).
( 6) A Decision on Appeal was entered by the Board of Patent Appeals
and Interferences in the Cochran Application on April 27, 2010, affirming the
Examiner's rejection of claims 3-5, 7, and 11-19 (at 11).
(7) The Appellants filed a Request for Rehearing on June 28, 2010.
(8) In that Request for Rehearing, the Appellants requested "rehearing
and a new Decision that corrects the clear error in the original Decision by
reversing the Rejection of Claims 14--19 under 35 USC 112, first paragraph, and
the Rejection of Claims 3, 4, 5, 7, 11, 12, 13, 14, 15, 16, 17, 19 under 35 U.S.C.
103(a)" (at 9).
(9) A Decision on Request for Rehearing was entered by the Board of
Patent Appeals and Interferences in the Cochran Application on November 18,
2010, denying the Request for Rehearing (at 7).
(10) A Notice of Appeal to the Court of Appeals for the Federal Circuit
was filed at the United States Patent and Trademark Office on January 10, 2011, in
the Cochran Application. That Notice states:
Please take notice of the filing with the UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT of a Petition
For Review/Appeal (copy enclosed) of the United States Patent and
Trademark Office Board of Patent Appeals and Interferences Decision
on Request For Rehearing decided November 18, 2010 declining
modification of a Decision dated April 27, 2010 affirming the
Examiner's rejection of Claims 3-5, 7, and 11-19 of Patent
Application No. 11/052,155.
( 11) A Judgment was entered by the Court of Appeals for the Federal
Circuit on December 13, 2011, affirming the Decision of the Board of Patent
Appeals and Interferences under Fed. Cir. R. 36.
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Application 13/667,059
(12) The Judgment issued as a Mandate on February 3, 2012.
(13) The instant Application (Application 13/667,059) was filed on
November 2, 2012, claiming benefit of, inter alia, the Cochran Application.
(14) In an Office Action entered on February 8, 2013, in the instant
Application, the Examiner stated (at 2):
The applicant's claim for the benefit ... under 35 U.S.C. 120 to
nonprovisional application 11/052, 155 is acknowledged. Examination
proceedings on application 11/052, 155 were terminated on
03 February 2012 (the date the Federal Circuit's opinion was issued as
a mandate) as there were no allowed claims or other action that was
required by the Office and the time period for petitioning for a Writ of
Certiorari had expired. See MPEP §1216.01 I.A. and MPEP §1214.06
I(A). The present application was filed on 02 November 2012 - about
nine months after proceed[ ing] s were terminated. Copendency
between the current application and the prior application is required
for claiming benefit under 35 U.S.C. 120. Since the applications are
not copending the benefit claim to the prior-filed nonprovisional
application is improper.
(15) In a Final Office Action entered on July 10, 2013, in the instant
Application, the Examiner stated that "the' 155 [Application (i.e., the Cochran
Application) is essentially abandoned as of the date of the issuance of the mandate"
(at 3).
( 16) A Petition to the Director under 3 7 CPR § 1.181 and 3 7 CPR § 1.183
was filed in the Cochran Application on October 9, 2013, seeking to declare that
the Cochran Application "has never been abandoned and was therefore pending on
the filing date of Application. No. 13/667,059 [i.e., the instant Application]" (at 1).
( 1 7) A Decision on Petition under 3 7 CPR § § 1.181 and 1.183 was entered
on February 25, 2014, affirming the abandoned status of the Cochran application
(at 7).
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Application 13/667,059
III.
In the Request, the Appellants contend that our Decision on Appeal is
incorrect "when it says: 'Indeed, according to the Official file of the Cochran
Application, proceedings in that Application were terminated after a decision by
the Court of Appeals for the Federal Circuit dated December 13, 2011, affirming
the rejections of all claims.'" Request 4. More specifically, the Appellants argue
that "allowable Claim 8 was not included in the appeal to the C.A.F.C. and
remained pending in the U.S.P.T.O. while the appeal was prosecuted." Request 5.
The Appellants contend that claim 8 remains pending "to this very day because the
proceedings on the Cochran Application have never been lawfully terminated."
Request 5.
The Appellants also argue that "the 'Official file of the Cochran
Application' fails to disclose any ... abandonment, for example such as by entry
of a Notice of Abandonment and mailing a Notice of Abandonment to the
Applicant." Request 6. ivforeover, citing 35 U.S.C. § 133, the Appellants argue
that "the Official file of the Cochran Application fails to show that the U.S.P.T.O.
gave notice to the applicant in the Cochran Application that he had to take action to
place Claim 8 in allowable form within a specified time, as required by C.C.P.A.
precedent (the Mobil Oil case) which is cited in the Appeal Brief." Request 6-7.
The Appellants' arguments were addressed in the Petition Decision entered
on February 25, 2014, in the Cochran Application. Thus, the Appellants' Request
for Rehearing in the instant Application amounts to a request to reconsider the
Petition Decision entered on February 25, 2014, in the Cochran Application. In
our Decision on Appeal, we indicated that the Board does not have jurisdiction to
reconsider that Petition Decision. Decision 3. Section 1201 of the Manual of
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Patent Examining Procedure (8th ed., Rev. 9, Aug. 2012)3 states that "[t]he line of
demarcation between appealable matters for the Board ... and petitionable matters
for the Director of the U.S. Patent and Trademark Office ... should be carefully
observed. The Board will not ordinarily hear a question that should be decided by
the Director on petition .... " Abandonment is a petitionable matter. See MPEP
§§ 1002.02(b), 1002.02(c), 711.03(c). Moreover, the Board does not have
jurisdiction, in this appeal, to reconsider a Decision entered in a different
Application. Thus, any appeal of the Petition Decision in the Cochran Application
is properly made in the Cochran Application.
IV.
The Appellants' Request for Rehearing has been granted to the extent that
the DECISION ON APPEAL dated April 1, 2016, has been reconsidered in light of
the Appellants' arguments. However, the Request is denied because the Decision
is not modified in any respect.
REHEARING DENIED
3 Hereinafter "MPEP."
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