Ex Parte Hatlestad et al

Patent Trial and Appeal Board

Sep 28, 2012

10787045 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEALS BOARD
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Ex parte JOHN HATLESTAD,
QINGSHENG ZHU, and MARINA V. BROCKWAY1
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Appeal 2011-003918
Application 10/787,045
Technology Center 3600
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Before, BIBHU R. MOHANTY, KEVIN F. TURNER, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Cardiac Pacemakers Inc., is the real party in interest.
Appeal 2011-0039187
Application 10/787,045

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STATEMENT OF THE CASE
In a Request for Rehearing (hereinafter “Request”), filed September
19, 2012 (“Req. Reh’g.”), Appellants request that we reconsider the Board’s
Decision of July 19, 2012 (hereinafter “Decision”).2 Specifically,
Appellants request that we reconsider our decision wherein we affirmed the
Examiner’s decision to reject claims 1-6, 8-10, 13, 14, 16-22, and 24-27
under 35 U.S.C. § 102(e) as anticipated by Warkentin and claims 7, 11, 23,
and 28 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Warkentin and Mann. (See Decision 8.)
Based on the discussion which follows, the request for rehearing is
denied.

PRINCIPLES OF LAW
Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1), and
“must state with particularity the points believed to have been
misapprehended or overlooked by the Board.” Moreover, requests must
specifically recite the points of law or fact which appellant feels were
overlooked or misapprehended by the Board. Arguments raised by
Appellants for the first time in a Request for Reconsideration are waived if
the arguments were required to have been made in the Briefs, unless good
cause is shown. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008).

2 Our decision on rehearing will make reference to the Appellants’ Appeal
Brief (“Br.,” filed August 25, 2010).
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Application 10/787,045

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DISCUSSION
Appellants assert that the Board improperly affirmed the rejection of
independent claim 24 based on the analysis of claim 1 without a rational
explanation or justification as to how the analysis applied to the method of
independent claim 24. (Req. Reh’g. 1-2.) Thus, Appellants request that “the
Board analyze the rejection of claim 24 separately.” (Req. Reh’g. 2.)
We are not persuaded by Appellants’ argument and decline to analyze
the rejection of independent claim 24 separately. In making this
determination, we find that Appellants argued independent claims 1, 9, and
24 as a group in their Appeal Brief. (Br. 12.) Specifically, Appellants
stated:
[i]ndependent claims 1, 9, and 24 recite or similarly
recite ‘an implantable device configured to implantably
electrically monitor fluid retention; an external, non-
ambulatory pill-dispensing containment unit configured
to accessibly house diuretic medication, the containment
unit including a diuretic medication pill receptacle
configured to house the diuretic medication and
configured to be selectively accessed by a person to
dispense the diuretic medication; . . . said health
management host system configured to receive data
related to the medication event, receive patient
physiological data including fluid retention data collected
by the implantable device, analyze the patient
physiological data and the medication event data, and
generate a diuretic medication therapy regimen using the
analysis of the patient physiological data and the
medication event data.’
(Br. 12-13.)
Based upon Appellants’ explicit statement that claims 1, 9, and 24
“recite or similarly recite” the limitations of independent claim 1, we
selected claim 1 as the representative claim for this group, consistent with 37
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Application 10/787,045

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C.F.R. § 41.37(c)(1)(vii), and indicated that the remaining independent
claims 9 and 24 stand or fall with claim 1. (See Decision 5 fn4.) Moreover,
each one of Appellants arguments in the Appeal Brief were directed to the
limitations of independent claim 1. (See Br. 13-15.)
Thus, Appellants have failed to show that we overlooked or
misapprehended any points of law or fact in grouping independent claims 1,
9, and 24 together.
Notwithstanding, Appellants’ Request still makes no arguments with
respect to the limitations recited by independent claim 24, and “the Board
will not, as a general matter, unilaterally review those uncontested aspects of
[Appellant’s] rejection.” Ex parte Frye, 94 U.S.P.Q. 2d 1072, 1075(BPAI
Feb. 26, 2010).
Accordingly, we find Appellants’ Request fails to state with
particularity the points the Board misapprehended or overlooked with
respect to independent claim 24 and fails to explain, to the extent the
Request includes any argument regarding claim 24, why the argument is
now being made, but could not have been made earlier (i.e., good cause for
omission).
Therefore, we decline to modify our original Decision.

DECISION
Accordingly, while we have granted Appellant’s request for rehearing
to the extent that we have reconsidered our previous decision, the request is
denied with respect to making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2011-0039187
Application 10/787,045

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REHEARING DENIED