Ex Parte Gitlin

Patent Trial and Appeal Board

Nov 13, 2017

12766889 (P.T.A.B. Nov. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/766,889 04/25/2010 Roman Gitlin 2532
89069 7590
Roman Gitlin
PO Box 1004
Rehovot, 76110
ISRAEL
11/15/2017 EXAMINER
YAARY, MICHAEL D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
11/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
romangitlin @ gmail. com
romangitlin@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN GITLIN
Appeal 2017-001291
Application 12/766,889
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a request for rehearing on April 25, 2017 (hereinafter
“Rehearing Request” or “Reh’g Req.”) under 37 C.F.R. § 41.52, seeking
rehearing of our Decision, mailed February 21, 2017 (hereinafter “Decision”
or “Dec.”), which affirmed various final rejections made by the Examiner.
Although the Rehearing Request was not timely, Appellant filed a petition
on April 24, 2017 under 37 C.F.R. § 41.3 to the Chief Administrative Patent
Judge for an extension of time. The petition was granted on August 9, 2017.
We have jurisdiction over the Rehearing Request under 35 U.S.C. § 6(b).
Appeal 2017-001291
Application 12/766,889
BACKGROUND
As an initial matter we note that a request for rehearing “must state
with particularity the points believed to have been misapprehended or
overlooked by the [Patent Trial and Appeal Board (the “Board”)].” 37
C.F.R. § 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. Accordingly, the proper course
for an appellant dissatisfied with a Board decision is to seek judicial review,
not to file a request for rehearing to reargue issues that already have been
decided. See 35 U.S.C. §§ 141, 145.
ANALYSIS
We grant the Rehearing Request to the extent that we consider the
Requester’s arguments, but DENY the request to modify the Decision.
Aside from arguments alleging fraud (Reh’g. Req., § 0, pg. 5) and
denial of Appellant’s due process rights (Reh’g Req., § 0, pg. 5) by the
Board, Appellant presents essentially the same arguments as originally
argued in the Appeal. Namely, that 1) the Examiner errs in rejecting claim 4
under 35 U.S.C. § 101 as being directed to non-statutory subject matter
(Reh’g Req., § I, pgs. 1—21); 2) the Examiner errs in rejecting claim 4 under
35 U.S.C. § 112, second paragraph, as being indefinite (Reh’g Req., § II,
pgs. 1—5); and 3) the Examiner misinterprets terms in the claim and, thus,
errs in rejecting claim 4 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bredehoft and Ito (Reh’g Req., § III).
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Appeal 2017-001291
Application 12/766,889
Appellant’s contentions with respect to the rejected claims merely
express disagreement with our Decision rather than identifying matters
misapprehended or overlooked. The Decision sufficiently addresses the
Examiner’s basis for rejecting the claims, which is all the Appellant reargues
here. Dec. 4—14.
Appellant argues the Board denies Appellant his right to due process
by affirming the Examiner’s final rejections of the claims. Reh’g. Req., § 0,
pgs. 1—13. In particular, Appellant argues, by adopting the findings and
reasons set forth by the Examiner in the Final Office Action as the Board’s
own, the Board commits “a complete, proactive violation of the Appellant’s
due process right.” Reh’g. Req., § 0, pg. 2 (emphases omitted).
We disagree. The Board’s rules, as interpreted in the Decision,
provide a full and fair opportunity to present any and all arguments
Appellant may have with regard to the rejections. The Board’s role is to
review the appealed rejections for error based upon the issues identified by
Appellant and in light of the arguments and evidence produced thereon. Cf.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has
long been the Board’s practice to require an applicant to identity the alleged
error in the examiner’s rejections”)). In this case, Appellant has failed to
persuasively identify the alleged errors in the rejections.
Because the Board’s rules provide Appellant with a full and fair
opportunity to be heard regarding the merits of any ground of rejection
contained in an examiner’s answer, there is no due process issue.
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Appeal 2017-001291
Application 12/766,889
Appellant argues the Examiner commits fraud. Specifically,
Appellant argues “that it is beyond argument that — by virtue of the
Examiner’s proactive failure to learn what the very rudiments of this
invention’s [sic] are — the Examiner’s prosecution of this invention amounts
to to [sic] fraud and nothing but the fraud.” Reh’g. Req., § 0, pg. 5
(emphases omitted). Appellant further argues “the Examiner’s fraud
becomes the Board’s fraud.” Reh’g. Req., § I, pg. 7 (emphases omitted).
We do not find Appellant’s disparagement of the Examiner to be
persuasive, helpful, or appropriate to advance prosecution and resolve the
present appeal.1 “Applicants and their attorneys or agents are required to
conduct their business with the United States Patent and Trademark Office
with decorum and courtesy . . . Complaints against examiners and other
employees must be made in correspondence separate from other papers.” See
37 C.F.R. § 1.3.
Accordingly, we are not persuaded of any basis for modifying the
Decision in light of the Rehearing Request.
REHEARING DECISION
While we have considered the Decision in light of the Request for
Rehearing, we decline to modify it in any respect.
1 Such a matter is petitionable to the Director, rather than appealable to
this Board. A petition may be filed under 37 C.F.R. § 1.181 “[t]o invoke
the supervisory authority of the Director in appropriate circumstances.”
§ 1.181(a)(3)
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Appeal 2017-001291
Application 12/766,889
Pursuant to 37 C.F.R. § 41.52(a)(1), this decision is final for the
purpose of judicial review. A party seeking judicial review must timely
serve notice on the Director of the United States Patent and Trademark
Office. See 37 C.F.R. §§ 90.1 and 1.983.
DENIED
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