Ex parte Gupta

Board of Patent Appeals and Interferences

Jul 17, 2000

08476526 (B.P.A.I. Jul. 17, 2000)

Requests for Reconsideration under 37 CFR § 1.197 are1
now denominated as Request for Rehearing. See 37 CFR §
1.197(b) as amended effective December 1, 1997, by final rule
notice, 62 Fed. Reg. 53, 131, 53, 197 (October 10, 1997), 1203
Off. Gaz. Pat. and Trademark Office 63, 122 (October 21,
1997).

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GYANENDRA GUPTA
__________
Appeal No. 1997-3102
Application 08/476,526
___________
ON BRIEF
___________
Before JOHN D. SMITH, PAK, and WALTZ, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
REQUEST FOR REHEARING
Appellant requests reconsideration of our decision1
Appeal No. 1997-3102
Application 08/476,526
2
entered May 18, 2000, wherein we affirmed the rejection of
claims 35 and 36 as unpatentable under 35 U.S.C. § 103 over
the Caravona patent in view of the Bivar publication. More
specifically, we noted in our decision, (page 11) that
appellant made no argument and no challenge in his brief to
the examiner’s reasonable finding that the same patentable
invention, as defined in 37 CFR § 1.601(n), is claimed by the
Caravona patent. Thus, we held that 37 CFR § 1.131 was
not available as a vehicle for appellant to overcome the
examiner’s rejection under 35 U.S.C. § 103 of the appealed
claims as unpatentable over Caravona in view of the Bivar
publication.
In appellant’s request at page 2, appellant argues that
the claims of the Caravona patent are for a “different
invention”, and that appellant’s declaration filed under 37
CFR § 1.131 was proper. In support of this conclusion, and
for the first time in this record, appellant presents reasons
at page 2 of his request why the claims of Caravona are
allegedly for a separate patentable invention. Since these
arguments were not originally presented in appellant’s main
Appeal No. 1997-3102
Application 08/476,526
3
and reply briefs, the submission of such arguments at this
time is improper and we decline to consider or further comment
upon them. See, for example, Ex parte Hindersinn, 177 USPQ 78
(Bd. App. 1971) and 37 CFR § 1.192(a).
At pages 3 and 4 of appellant’s request, appellant
contends that, should the Board’s decision be sustained, it
would be incumbent upon the examiner to declare an
interference, or alternatively, the appellant herein would
request a interference based upon the decision be declared.
In light of our disposition of the issues raised in this
appeal, and in light of appellant’s arguments in the request
at pages 3 and 4, this application is returned to the examiner
to take action not inconsistent with our
decision and not inconsistent with the principles set forth in
In re Eickmeyer, 602 F.2d 974, 979, 202 USPQ 655, 660 (CCPA
1979), where the court indicated that the reason for not
permitting a 37 CFR § 131 affidavit, where a U.S. patent
reference claims the invention of rejected claims of an
application, as here, “is to compel the use of an interference
to determine priority of invention.”
Appeal No. 1997-3102
Application 08/476,526
4
Appellant’s request (page 2) that the examiner’s final
rejection be reversed is denied. However, the application is
returned to the examiner to take action not inconsistent with
our decision entered May 18, 2000. To the extent indicated
above, appellant’s request is denied.
DENIED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1997-3102
Application 08/476,526
5
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
JDS:pgg
Rene E. Grossman
Texas Instruments Incorporated
P.O. Box 655474 MS 219
Dallas, TX 75265