Ex parte Kakutani

Board of Patent Appeals and Interferences

Feb 8, 1999

08201479 (B.P.A.I. Feb. 8, 1999)

Application for patent filed February 23, 1994. 1
According to appellant, the application is a continuation of
Application 07/915,419, filed July 17, 1992, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MASAYOSHI KAKUTANI
________________
Appeal No. 96-2651
Application 08/201,4791
________________
HEARD: MAY 7, 1998
________________
Before STONER, Chief Administrative Judge,
COHEN and ABRAMS, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to a "REQUEST FOR REHEARING"
(hereafter "request") of our decision dated May 28, 1998,
wherein this panel of the board reversed the examiner's
Appeal No. 96-2651
Application 08/201,479
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rejection of claims 1, 7, and 8 under 35 U.S.C. § 102(b) as
being anticipated by Fletcher, reversed the examiner's
rejection of claims 1, 4, 7, 8, and 22 under 35 U.S.C. § 103
as being unpatentable over Röhner, Fletcher, and Worg, and
reversed the examiner's rejection of claims 11 through 14 and
17 through 19 under 35 U.S.C. § 103 as being unpatentable over
Röhner, Fletcher, Worg, and Martinez. Additionally, we
introduced “NEW GROUNDS OF REJECTION” as follows:
a new rejection of claims 1 and 7 under 35 U.S.C. § 103
as being unpatentable over Worg; and
a new rejection of claims 2 through 4, 8, and 22 under 35
U.S.C. § 103 as being unpatentable over Worg in view of
Röhner.
On pages 14 and 15 of our decision, appellant was
expressly informed that “one” of two options set forth in the
decision (page 15) must be exercised with respect to the new
grounds of rejection to avoid termination of proceedings as to
the rejected claims.
In the request, appellant includes a “Supplemental
Declaration under 37 CFR § 1.132" and indicates that, in the
event the Board does not reverse its decision, it is requested
Appeal No. 96-2651
Application 08/201,479
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that the application be remanded to the examiner for
consideration of the additional facts presented in the
supplemental declaration regarding commercial success.
Appellant’s request lacks express conformity with the
mandatory election of one of the two options set forth in the
decision.
Nevertheless, and particularly in light of appellant’s
submission of a Supplemental Declaration with additional facts
regarding commercial success, we consider appellant’s request,
inclusive of argument contesting the new rejections (request,
pages 2 through 4), as an election of option (1) to have the
matter of the new rejections reconsidered by the examiner.
In conclusion, as indicated above, we understand the
overall content of the request as an election of option (1) of
37 CFR 1.196(b). Accordingly, the request for rehearing
before this panel of the board is DENIED, and the application
is REMANDED to the examiner for consideration of the content
of the request.
DENIED and REMANDED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
Appeal No. 96-2651
Application 08/201,479
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)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 96-2651
Application 08/201,479
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