Ex Parte Koenig et al

Board of Patent Appeals and Interferences

Sep 16, 2009

11025723 (B.P.A.I. Sep. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID W. KOENIG and WAEL R. JOSEPH
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Appeal 2009-000957
Application 11/025,723
Technology Center 3700
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Decided: September 17, 2009
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Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge GRIMES.

Opinion Concurring filed by Administrative Patent Judge PRATS.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered July 30, 2009,
which affirmed the Examiner’s rejection of claims 3, 4, 8-10, 16, 17, 32, and
33 under 35 U.S.C. § 102(a). The request for rehearing is denied.

Appeal 2009-000957
Application 11/025,723

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Appellants argue that the majority “misapprehended the disclosure of
European Patent Application No. 1,468,661 (Cinelli et al.)” (Req. Rhg. 1).
Appellants argue that Cinelli does not inherently meet the limitations of the
claims on appeal because some embodiments disclosed by Cinelli, under
some circumstances, might not lose adhesiveness after being applied to skin
and removed (id. at 2-3).
A request for rehearing is not an opportunity to revisit de novo the
merits of the original panel decision, even if it included a dissenting opinion.
A “request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board.” 37 CFR
§41.52(a)(1). Thus, to prevail on rehearing, an appellant must show that the
decision was based on a misunderstanding or incomplete picture of the
record on appeal at the time of the decision.
New arguments are not permitted in a request for rehearing. See 37
C.F.R. § 41.37(c)(1)(vii) (“Any arguments not presented in the brief or a
reply brief pursuant to § 41.41 will be refused consideration by the Board,
unless good cause is shown.”); 37 C.F.R. § 41.52(a)(1) (“Arguments not
raised in the briefs before the Board . . . are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this
section,” neither of which applies here). See also Cooper v. Goldfarb, 154
F.3d 1321, 1331 (Fed. Cir. 1998) (“A party cannot wait until after the Board
has rendered an adverse decision and then present new arguments in a
request for reconsideration.”).
The reasoning relied on in the majority opinion was presented by the
Examiner in the Office action mailed March 30, 2007 (see pages 2-3) and in
Appeal 2009-000957
Application 11/025,723

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the Examiner’s Answer (see page 6). Appellants responded to that
reasoning in the Appeal Brief (see page 8). In their response, Appellants did
not argue that the Examiner’s reasoning did not apply to all of the
embodiments disclosed by Cinelli under all circumstances. That argument
was presented for the first time in the Request for Rehearing, and therefore
cannot represent a point that was misapprehended or overlooked in the
previous decision.

REHEARING DENIED

lp

Appeal 2009-000957
Application 11/025,723

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PRATS, Administrative Patent Judge, concurring.
I write separately to clarify that, although I agree that Appellants have
not presented a proper basis for rehearing their appeal, I nonetheless would
still reverse the appealed rejection.

lp
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