Ex Parte Fonte

Patent Trial and Appeal Board

Aug 19, 2013

11460100 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW V. FONTE
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Appeal 2011-008631
Application 11/460,100
Technology Center 3600
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Before JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”), dated October 21, 2013, of our decision mailed
August 21, 2013 (hereinafter “Decision”). In that Decision, in addition to
affirming the rejections of claims 57, 58, 61, 62, and 65-69, we summarily
affirmed the Examiner’s rejection of claims 57, 58, and 64 under 35 U.S.C.
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Application 11/460,100

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§ 102(e) as anticipated by Witherell (US 2006/0288854 A1, published Dec.
28, 2006).

OPINION
Appellant contends that “the Board overlooked the fact that the
Examiner improperly presented [a] new ground of rejection [i.e., the
rejection of claims 57, 58, and 64 under 35 U.S.C. § 102(e) as anticipated by
Witherell,] in the Examiner’s Answer without properly identifying this new
ground of rejection under a separate heading as required [by the Manual of
Patent Examining Procedure (]MPEP[)] § 1207.02.” Request 1. Emphasis
added. Appellant notes that “[a]lthough a new ground of rejection is
allowed in an Examiner’s Answer, the Examiner must ‘prominently identify
(e.g., a separated heading with all capitalized letters) any new ground of
rejection that has been approved by the TC Director or designee.’” Request
1-2 (citing MPEP § 1207.02(A)(9)(g)). Appellant also notes that “[t]he
Examiner’s Answer itself specifically states that ‘[n]ew grounds of rejection
(if any) are provided under the subheading ‘NEW GROUNDS OF
REJECTION,’” and “[t]his was not done in this case.” Request 2.
Consequently, Appellant also contends that “the Examiner’s new ground of
rejection was improperly presented for the first time in the Examiner’s
Answer, and this new ground of rejection should not be allowed by the
Board.” Id.
Appellant misunderstands that the MPEP provides for two different
situations. More particularly, MPEP § 1207.02(A)(9)(g), pointed to by
Appellant, addresses a first situation where the Examiner sets forth a “new
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ground of rejection that has been approved by the TC Director or designee”
(hereinafter “designated new ground of rejection”). However, MPEP
§ 1207.03 IV, entitled REQUEST FOR DESIGNATION AS NEW
GROUND OF REJECTION, addresses a second situation where the
“examiner’s answer contains a new ground of rejection not identified as
such” (hereinafter “undesignated new ground of rejection”). With respect to
undesignated new grounds of rejection in an examiner’s answer, the MPEP
states in pertinent part that:
If appellant believes that an examiner’s answer contains a new
ground of rejection not identified as such, appellant may file a
petition under 37 CFR 1.181(a) within two months from the
mailing of the examiner’s answer requesting that a ground of
rejection set forth in the answer be designated as a new ground
of rejection. Any such petition must set forth a detailed
explanation as to why the ground of rejection set forth in the
answer constitutes a new ground of rejection. Any allegation
that an examiner’s answer contains a new ground of rejection
not identified as such is waived if not timely raised (i.e., by
filing the petition within two months of the answer) by way of a
petition under 37 CFR 1.181(a). The filing of a petition under
37 CFR 1.181 does not toll any time period running. If
appellant wishes to present arguments to address the rejection
in the examiner’s answer, appellant must file a reply brief to the
examiner’s answer within two months from the mailing date of
the examiner’s answer.
See MPEP § 1207.03 IV.
In the case before us, the Examiner’s Answer sets forth an
undesignated new ground of rejection as provided for in MPEP § 1207.03
IV, not a designated new ground of rejection governed by MPEP
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§ 1207.02(A)(9)(g). Compare Ans. 4-5 and Final Rej. 3-41. In response to
the Examiner setting forth an undesignated new ground of rejection in the
Answer, the Appellant could have “file[d] a petition under 37 CFR 1.181(a)
within two months from the mailing of the examiner’s answer requesting
that a ground of rejection set forth in the answer be designated as a new
ground of rejection.” MPEP § 1207.03 IV. Our review of the record of the
application underlying the present appeal reveals that Appellant did not file a
petition under 37 C.F.R. § 1.181(a) within two months from the mailing of
the examiner’s answer requesting that a ground of rejection set forth in the
Answer be designated as a new ground of rejection, nor did Appellant
present arguments to address the undesignated new ground of rejection in
the Examiner’s Answer. Thus, in accordance with MPEP § 1207.03 IV,
since Appellant did not timely raise the issue of the undesignated ground of
rejection in the Answer by filing a petition under 37 C.F.R. § 1.181(a),
Appellant waived any argument they had to assert that the Examiner’s
Answer contained an improper undesignated new ground of rejection.
Moreover, Appellant’s Request still does not provide substantive
arguments against the Examiner’s rejection of independent claim 57 under
35 U.S.C. § 102(e) as anticipated by Witherell. See Request 4-5. In
particular, Appellant contends that “claim 57, and the claims dependent
therefrom, are patentable over Witherell for at least the reasons cited in the
Appellant’s Appeal Brief, and the anticipation rejection should not be
sustained by the Board.” Request 4-5. However, as pointed out in the

1 Our reference to “Final Rej.” is to the Office Action mailed March 31,
2010, i.e., the Office Action from which this Appeal was taken. See App.
Br. 1.
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Decision, Appellant’s Appeal Brief “presents no arguments of error
regarding [the § 102(e)] ground of rejection.” Decision 3. In addition,
Appellant’s incorporation by reference of the arguments made for the § 103
portion of the Examiner’s § 102/103 rejection (Request 4), is unpersuasive
since obviousness has different standards and tests as compared to
anticipation.
Appellant’s argument on page 5 of the Request that “the Examiner
conceded that claims 58 and 64 were not anticipated by Witherell in the
Examiner’s Answer” is untimely. It is a well-nigh insurmountable burden to
convince this Board that we have overlooked arguments that were not
presented. Prescience is not a required characteristic of the Board. Cf.
Keebler Co. v. Murray Baking Prods., 866 F.2d 1386, 1388 (Fed. Cir. 1989).
The Board need not divine all possible afterthoughts of counsel that might
be asserted for the first time on appeal. Id. After all, a Request for
Rehearing is not a vehicle to raise arguments that could have been raised,
but were not, in the briefings prior to a Board decision. The purpose of
rehearing is to provide Appellants an opportunity to identify “points
believed to have been misapprehended or overlooked by the Board,” 37
C.F.R. § 41.52(a)(1), not to provide Appellants a second appeal.
In any event, we view the statements of the Examiner alluded to in
Appellant’s argument to merely constitute an alternative line of reasoning,
rather than a concession that Witherell does not anticipate the claimed
subject matter.
For the reasons discussed supra, Appellant’s Request does not
persuade us that we misapprehended or overlooked anything with respect to
our previous Decision.
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DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to making any modification to the Decision, aside
from the modification that the Decision was actually an affirmance, not an
affirmance-in-part (since at least one ground of rejection of all pending
claims was affirmed).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

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