Ex Parte John

Patent Trial and Appeal Board

Nov 30, 2018

13020999 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/020,999 02/04/2011 Marietta A. John
27981 7590 12/04/2018
WENDY W. KOBA
POBOX556
SPRINGTOWN, PA 18081
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
R-90223 3593
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
wendykoba@usa.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIE TT A A. JOHN
Appeal2017-001882
Application 13/020,999
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals from the Examiner's decision to reject claims 1-5,
7, and 10-12 under 35 U.S.C. § 112 ,r 2 and 35 U.S.C. § 103(a). 2 A prior
rejection under 35 U.S.C. § 103(a) over different prior art was before us in a
prior appeal, which we reversed. See Appeal Br., Related Proceedings
Appendix (reproducing our Decision of November 3, 2015). After the prior
Decision, the application was transferred to a new examiner, Examiner Dees,
1 The Appeal Brief identifies Marietta A. John as the real party in interest.
Appeal Br. 1.
2 A hearing was held on November 19, 2018.
Appeal2017-001882
Application 13/020,999
who performed a new search and applied the rejections before us now. Final
3-9; Appeal Br. 6-7; Appeal Br. Exhibits A and B. Appellant does not
argue that Examiner Dees' new rejections contain substantive errors on the
merits. Instead, Appellant seeks our review of the question of whether, after
being assigned to a new examiner, that examiner improperly reopened
prosecution. Appeal Br. 6.
According to Appellant, the new rejection under 35 U.S.C. § 112 ,r 2 is
not permitted because it was contrary to 3 7 C.F .R. § 1.19 8, which states that
reopening of prosecution can only occur "for the consideration of matters
not already adjudicated, sufficient cause being shown." 37 C.F.R. § 1.198.
Appellant points out that the claims, in their present form, were reviewed at
least twice by the prior examiner, Examiner LeBlanc, and neither time did
Examiner LeBlanc enter a rejection under 35 U.S.C. § 112 ,r 2. Appeal Br.
8, citing Non-Final of May 24, 2013 and Final of Sept. 12, 2013. Appellant
also points out that the Board is authorized to enter new grounds of rejection
and did not. Id. Thus, according to Appellant, the Examiner's attempt to
now raise such issues is improper as being directed to language that has
already been examined and, therefore, "already adjudicated" and "such a
ground of rejection is not permitted in a reopening of prosecution in
accordance with the requirements of 37 C.F.R. § 1.198."
First, we note that the Board is not mandated to enter a new ground of
rejection. 37 C.F.R. § 4I.50(b) authorizes the Board to make a new ground
of rejection, but does not require the Board to do so. Thus, the absence of a
new ground of rejection by the Board does not provide evidence that such a
new rejection is without merit.
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Application 13/020,999
Second, the 35 U.S.C. § 112 ,r 2 rejection was not present at the time
of the first appeal. Thus, it has not yet been reviewed. This is so even
though it could have been made. The rejection has not been "already
adjudicated" as provided in 37 C.F.R. § 1.198.
Third, and most importantly here, we do not have jurisdiction to
review the question Appellant presents to us. The question of whether the
new examiner, Examiner Dees, acted improperly by entering the rejection
under 35 U.S.C. § 112 ,r 2 after the appeal and transfer of the application to
her is a matter of examiner discretion reviewable by petition, not by appeal.
Our jurisdiction is limited to the review of the merits of rejections of claims
and those matters that directly relate to matters involving the merits of those
rejections. 35 U.S.C. §§ 6(b) and 134(a) (2006); In re Hengehold, 440 F.2d
1395, 1404, (CCPA 1971). As stated inHengehold:
There are a host of various kinds of decisions an
examiner makes in the examination proceeding- mostly
matters of a discretionary, procedural or nonsubstantive
nature- which have not been and are not now appealable to the
board or to this court when they are not directly connected with
the merits of issues involving rejections of claims, but
traditionally have been settled by petition to the [Director].
Hengehold, 440 F.2d at 1403.
Review of procedural matters such as whether an examiner abused his
or her discretion in reopening prosecution is one of those discretionary,
procedural questions subject to petition, not appeal. "In the PTO, patent
applications are examined for compliance with the statutory provisions of
Title 35, United States Code, as set forth in sections 100, 101, 102, 103, and
112. These are considered to be examinations 'on the merits.'" In re
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Application 13/020,999
Harnisch, 631 F.2d 716,721 (CCPA 1980). "If there is an abuse of
discretion, the matter may be remedied by a Rule 181 petition to the
[Director]." In re Mindick, 371 F.2d 892,894 (CCPA 1967).
We understand Appellant's frustration with the late timing of the
rejection, but the basis for review of the Examiner's action is under the
abuse of discretion standard and such a review is made by petition rather
than by appeal.
Appellant further contends that the Examiner's new rejection under 35
U.S.C. § 103(a) should not be permitted because the new examiner,
Examiner Dees, failed to follow the guidance ofMPEP § 1214.07, which
states that "[t]he second examiner should give full faith and credit to the
prior examiner's search." Appeal Br. 8-10 ( emphasis Appellant). Appellant
notes that the second examiner, Examiner Dees, performed a new search
after transfer of the application to her. On this basis, Appellant contends
Examiner Dees did not give full faith and credit to the prior examiner's
search. Appeal Br., Exhibits A and B.
As stated in Molins PLC v. Textron, Inc.:
"The MPEP [is] commonly relied upon as a guide to
patent attorneys and patent examiners on procedural matters."
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439, 221
USPQ 97, 107 (Fed.Cir.1984). While the MPEP does not have
the force of law, it is entitled to judicial notice as an official
interpretation of statutes or regulations as long as it is not in
conflict therewith. Id. at 1439, 221 USPQ at 107.
Molins, 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995). The mandate of the PTO
is to grant patents that conform to the statutory provisions of Title 35, United
States Code. Thus, the MPEP must be interpreted in a way that does not
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Application 13/020,999
conflict with the statutory mandate. In any case, it is up to the Director and
his or her delegates to decide whether an examiner abused his or her
discretion in following, or not following, the procedure of the MPEP. The
issue is not appealable to the Board.
Because Appellant fails to address the merits of the Examiner's
rejections, Appellant has not shown reversible error in those rejections.
Thus, we sustain the rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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