Ex Parte Ebert

Board of Patent Appeals and Interferences

Dec 5, 2008

10689230 (B.P.A.I. Dec. 5, 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 DAVID A. EBERT

Appellant
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Appeal 2007-0787
Application 10/689,230
Technology Center 3600
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Decided: December 05, 2008
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Before RICHARD E. SCHAFER, RICHARD TORCZON and
ROMULO H. DELMENDO, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON REHEARING
Applicant requests reconsideration pursuant to 37 C.F.R.
§§ 41.50(b)(2) and 41.52.1 We deny the request.
Our decision reversed the rejection of all claims and entered a new
ground of rejection as to Claim 1 under 35 U.S.C. § 103(a). The panel did
not express any view on the effect of the new ground on the remaining
claims.

1 Applicant’s request was not received by the panel until November 5, 2008.
Appeal 2007-0787
Application 10/689,230

2
An applicant may request reconsideration pointing out, with
particularity, matters thought to have been overlooked or misapprehended by
the panel in reaching its decision. 37 C.F.R. § 41.52(a)(1).
Applicant argues that “the Board overlooked the opportunity to
advance the application by expressing no view as to the patentability of
claims 2-4 and 6-11.” Recon, p. 2, ¶ 1. Applicant then asks that “the Board
address the rejection of the remaining claims 2-4 and 6-11.”
We neither failed to address the rejection of Claims 2-4 and 6-11, nor
overlooked the “opportunity” to advance the application. Our decision
reversed all the rejections entered by the examiner as to all claims.
Decision, p. 7, ll. 3-7. While entering a new ground, we also expressly
declined to consider the effect of the new ground on the patentability of
Claims 2-11 leaving that determination to the examiner. Decision, p. 7, ll. 8,
ll. 21-23,
Applicant speculates that the Examiner will reject Claims 2-11
utilizing the same references and same bases used during prosecution and
invites us to review the speculated rejections. Recon., p. 2. We decline the
invitation. The new ground of rejection relied on a different basis for
unpatentability than relied on by the examiner. The application of the new
ground to the more detailed subject matter of Claims 2-11 is, in our view,
best left to the expertise of the examiner.
REHEARING DENIED
Appeal 2007-0787
Application 10/689,230

3

MAT

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