Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 22, 2016

12079921 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/079,921 03/27/2008
127496 7590 08/24/2016
ICT Law I Technology Group, pllc
918 S. Horton St. Suite 717
220
Seattle, WA 98134
FIRST NAMED INVENTOR
Edward K.Y. Jung
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.
IV 11-4-lA 2315
EXAMINER
ABEDIN, SHANTO
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
ict_isf_ edcktng_ 127 496@ictlawtech.net
dalecook@ictlawtech.net
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO JR., CLARENCE T. TEGREENE,
and LOWELL L. WOOD JR.
Appeal2014-007927
Application 12/079 ,921
Technology Center 2400
Before CATHERINE SHIANG, MELISSA A. HAAPALA, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered May 31, 2016,
which affirmed the double patenting rejections and reversed the 35 U.S.C.
§ 103 rejection. We have considered Appellants' arguments, and we are not
persuaded that any matters were misapprehended or overlooked in our
Decision. Therefore, the request for rehearing is denied.
Appeal2014-007927
Application 12/079,921
DISCUSSION
A request for rehearing "must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board," and must comply with 37 C.F.R. § 41.52(a)(l) (2012). Appellants'
request for rehearing is limited to a request the Board remand the
Application with instructions to withdraw the double patenting rejection and
to issue a Notice of Allowance. Req. Reh' g 2. Appellants do not present
any arguments that we misapprehended or overlooked any issue of fact or
law in our Decision to affirm the double patenting rejections. Instead,
Appellants argue the rejections are obviated by the filing of a Terminal
Disclaimer. Id.
Our Decision summarily affirmed the double patenting rejection
because Appellants did not present any arguments contesting the rejections.
Dec. 3. Appellants are not permitted in the Request for Rehearing to newly
argue the double patenting rejections are obviated by a Terminal Disclaimer
filed July 31, 2016, after our Decision was entered. See 37 C.F.R.
§ 41.52(a)(l) ("Arguments not raised, and Evidence not previously relied
upon, ... are not permitted in the request for rehearing except as permitted
by paragraphs (a)(2) through (a)( 4)."). Jurisdiction over the Application
resides with the Examiner to consider whether the Terminal Disclaimer
obviates the double patenting rejections or whether further action by
Appellants is required. See 37 C.F.R. § 41.54.
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Appeal2014-007927
Application 12/079,921
CONCLUSION
We have granted Appellants' request for rehearing to the extent that
we have reconsidered our Decision entered May 31, 2016. Appellants have
not shown that we misapprehended or overlooked any issue of law or fact in
reaching that Decision. Accordingly, the request is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
REHEARING DENIED
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