Ex Parte Johansson et al

Patent Trial and Appeal Board

Feb 3, 2015

11420949 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RONALD C. JOHANSSON and VIVEK BHARTI
____________________

Appeal 2012-008713
Application 11/420,949
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing of our Decision of December 22, 2014.
In that Decision, we summarily affirmed the Examiner’s rejection of claims
1–15, and 17 under 35 U.S.C. § 112 ¶ 1. Appellants request that we “at the
very least change the designation of the Decision from ‘Affirmed’ to
‘Affirmed in Part’.” Req. Reh’g 1. Appellants state that “[t]his is to ensure
that the appellant properly receives the Patent Term Adjustment that is due
upon the conclusion of a successful appeal.” Id.
Appeal 2012-008713
Application 11/420,949

2
We decline to change our Decision in the manner requested by
Appellants. Appellants’ request fails to state the points that were believed to
have been misapprehended or overlooked by the Board.
The Decision arose from Appellants’ appeal of the Examiner’s
decision to reject all of the pending claims, claims 1–15, 17, and 18.
Examiner’s Office Action of September 21, 2011; Appeal Br. 3 (requesting
review of the rejection of claims 1–15, and 18, but not claim 17, which the
Examiner objected to as depending from canceled claim 16).
In the Answer, the Examiner maintained the rejection of claims 1–15,
and 17, but withdrew the rejection of claim 18. In response, Appellants
filed a Reply Brief stating a willingness to accept allowance of a claim set
based upon no longer rejected claim 18. In pertinent part the Reply Brief
read:
[U]pon review of this Reply Brief by the Examiner (before
jurisdiction passes to the Board), if the Examiner wishes to
reopen prosecution for the purpose of canceling claim 1 by
Examiner’s Amendment and amending claims 2-15 to depend
on claim 18 rather than on claim 1 and issuing a notice of
allowance, the appellant would welcome this.”
Reply Br. 4.
Because Appellants were no longer contesting the rejection of claims
1–15, and 17, we summarily affirmed the rejection of those claims.
In this situation, a summary affirmance is a proper outcome, but an
affirmance-in-part is not. In order for our decision to be an affirmance-in-
part, we would need to make an adverse decision against the Examiner, and
we did not.
Appeal 2012-008713
Application 11/420,949

3
Appellants contend that a reversal occurred during the appeal
proceedings because the Examiner withdrew the rejection of claim 18. Req.
Reh’g 2. But the Examiner’s withdrawal was not a decision rendered by the
Board under 35 U.S.C. §§ 6(b) and 134(a) of the statute. Therefore, it was
not a reversal by the Board on appeal.
Appellants have not directed us to a statutory basis that gives the
Board the authority to modify the decision as requested. The subject
Request has been granted to the extent that the Decision has been
reconsidered, but denied with respect to making any changes therein.

DENIED

cdc