Ex Parte Eilts

Board of Patent Appeals and Interferences

Oct 22, 2003

08868663 (B.P.A.I. Oct. 22, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HENRY S. EILTS
_____________
Appeal No. 2000-2134
Application No. 08/868,663
______________
ON BRIEF
_______________
Before HAIRSTON, BARRETT, and DIXON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant has requested reconsideration of our decision
dated June 27, 2002, wherein we affirmed the lack of written
description rejection of claims 25, 28 and 29, the anticipation
rejection of claims 21, 27 and 29 over either Dudek, Albrow or
Barnes, and the anticipation rejection of claims 21 through 29.
Appellant’s arguments (request, page 2) concerning the
“multiple of 10 milliseconds” delay in claim 25 have been
Appeal No. 2000-2134
Application No. 08/868,663
2
reconsidered, but we still find that the originally filed
disclosure has written description support for a multiple of
40 milliseconds, and not a “multiple of 10 milliseconds.”
Appellant can not rely on the Golden patent to provide written
description support for the now claimed delay (request, page 2).
With respect to claim 28, we can not find any discernible
error in our decision based upon appellant’s comments (request,
pages 2 and 3) concerning this claim. The referenced portion of
the specification does not provide written description support
for the subject matter set forth in this claim.
Turning to claim 29, appellant argues (request, page 3) that
“delay circuits to provide a delay are well known in the art and
are continually demonstrated in the prior art as well as in
patent applications by blocks rather than specific circuits as is
well known to anyone with even a small modicum of knowledge in
the art.” As indicated in our decision, neither the prior art
discussed in the brief nor the skill in the art can take the
place of a demonstration by the appellant that he was in
possession of the now claimed subject matter on the filing date
of the subject application.
Appeal No. 2000-2134
Application No. 08/868,663
3
Turning next to the prior art rejections, appellant argues
(request, page 3) that “[t]he twice rejected decision of the
administrative patent judge in this case is the final rejection
and not the Examiner’s Answer.” Appellant also argues (request,
page 4) that the examiner never made a showing that the rejected
claims are readable on the cited references. If appellant
considered the examiner’s final rejection of claims 21, 27 and 29
to be premature, then appellant should have protested such an
action via a petition to the Director under 37 CFR § 1.181, and
not an appeal to the Board under 37 CFR § 1.191. With respect to
appellant’s argument that the examiner did not present a prima
facie showing of anticipation of the noted claims, we find that
the examiner presented such a case in the examiner’s answer
(answer, pages 5 through 11). The reply brief failed to rebut
the points made by the examiner in the answer. Thus, we see no
need to modify our decision or to remand to the examiner as
requested by the appellant (request, pages 4 and 5).
Appellant’s argument (request, page 5) concerning
declarations supposedly made on the record by Messrs. Eilts and
Goldman is not timely since it was not argued in the briefs.
Even if they were of record, we do not see the relevance of such
declarations to an anticipation rejection.
Appeal No. 2000-2134
Application No. 08/868,663
4
With respect to the anticipation rejection of claims 21
through 29 based upon the teachings of the Golden patent,
appellant argues (request, page 5) that the final rejection
(paper number 10) only listed claims 21, 27 and 29 as being
rejected based upon the teachings of this reference. The
examiner subsequently included claims 22 through 26 and 28 in
this rejection based upon admissions by appellant that claims
21 through 29 were copied from Golden (answer, page 11). In view
of the lack of surprise to appellant based upon the examiner’s
action, and appellant’s reaffirmation of the act of copying
claims 21 through 29 from Golden (reply brief, page 3), we hereby
decline to change our decision to affirm the anticipation
rejection of claims 21 through 29 based upon the teachings of
Golden.
Appellant’s arguments (request, page 6) concerning the
shortcomings in the teachings of Dudek, Albrow and Barnes in the
anticipation rejections of claims 21, 27 and 29 are untimely, and
should have been presented in the briefs.
Appellant’s request has been granted to the extent that our
decision has been reconsidered, but such request is denied with
respect to making any modifications to the decision.
Appeal No. 2000-2134
Application No. 08/868,663
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING
DENIED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
KWH/hh
Appeal No. 2000-2134
Application No. 08/868,663
6
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