11115752 (B.P.A.I. Sep. 20, 2010)

Ex Parte Kothandaraman et al

Board of Patent Appeals and InterferencesSep 20, 2010

11115752 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/115,752 04/26/2005 Sridhar Kothandaraman 05-00669(01) 2374 23410 7590 02/08/2011 Vista IP Law Group LLP 2040 MAIN STREET, Suite 710 IRVINE, CA 92614 EXAMINER MANUEL, GEORGE C ART UNIT PAPER NUMBER 3762 MAIL DATE DELIVERY MODE 02/08/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SRIDHAR KOTHANDARAMAN, JOHN D.H. KING, and CARLA M. WOODS ____________ Appeal 2009-011880 Application 11/115,752 Technology Center 3700 ____________ Before WILLIAM F. PATE, III, JOHN C. KERINS, and MICHAEL W. O’NEILL, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 Sridhar Kothandaraman et al. (Appellants) filed a “Request for Rehearing” dated Nov. 15, 2010, (hereinafter “Request”) of our decision 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011880 Application 11/115,752 2 dated Sep. 21, 2010 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s decision to reject claims 1-9 and 15 under 35 U.S.C. § 103(a) as unpatentable in view of Shaya, Smith, and Greeninger and we reversed the Examiner’s decision to reject claims 10-14 and 16-22 under 35 U.S.C. § 103(a) as unpatentable in view of Shaya, Smith, and Greeninger. Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. Appellants contend that the Decision on page 6 misapprehended Appellants’ arguments that attempt to show nonobviousness by arguing individually each reference used in the Examiner’s rejection and none of the references individually teach the claim element of “at least one graphical display configured for displaying a pulse waveform corresponding to the applied stimulation energy.” Request 2. We did not misapprehend Appellants’ arguments. As we noted in the Decision on page 5, the Examiner found that the combined teachings of Greeninger and Shaya render obvious this claimed feature, see Ans. 4-5. Appellants contend that we overlooked the requirement that the Examiner must provide some articulated reason with some rational underpinning in order to support the legal conclusion of obviousness. Request 2-3. Neither the Appeal Brief nor the Reply Brief presents an argument that the Examiner failed to articulate a reason with some rational underpinning. The purpose of a rehearing is to provide Appellants an opportunity to identify “points believed to have been misapprehended or overlooked by the Board,” 37 C.F.R. § 41.52(a)(1), not to provide Appellants a second appeal. As such, this argument was waived and we deny it further consideration. Appeal 2009-011880 Application 11/115,752 3 Appellants contend that we overlooked arguments at the bottom of page 8 of the Appeal Brief that the Examiner’s obviousness rationale is flawed. Request 3-4. Appellants fail to provide sufficient evidence to demonstrate that the Examiner’s rationale is flawed. Appellants’ statements that the Examiner’s proposed modification would not provide information relating to the effectiveness of the implanted device and what the references supposedly teach are merely Appellants’ unsupported opinion. Appellants contend that we misapprehended the claim language within claim 1. Further, Appellants contend that they are entitled to present new arguments because Appellants perceive that when we provided a claim construction to the claims that the Examiner rejected in order to determine whether Appellants had demonstrated an error in the Examiner’s rejection, and since such a claim construction was not presented during prosecution, the Decision contains a new ground of rejection. Appellants proceed to contend that the claim language should be construed as actually being configured for displaying the pulse waveform corresponding to the applied stimulation energy as opposed to being capable of being configured for displaying the pulse waveform. Request 4-5. Claim construction is a question of law and our claim construction given within the Decision is the broadest reasonable interpretation when read in light of the Specification as it would be understood by a person having ordinary skill in the art. Whether we adopt the Appellants’ explicit claim construction now advanced or our own, when either is compared to the combined teachings of Shaya, Smith, and Greeninger, the combined teachings render obvious the claimed invention. Appeal 2009-011880 Application 11/115,752 4 Concerning Appellants’ contentions regarding claims 4 through 8, as stated above, whether we adopt the claim construction advanced by Appellants or our own, when either is compared to the combined teachings of Shaya, Smith, and Greeninger, the claimed invention is rendered obvious by their teachings. Our position is maintained that the claim limitations within claims 4 through 8 fail to patentably distinguish these claims from the combined teachings of Shaya, Smith, and Greeninger. CONCLUSION The arguments in Appellants’ Request have not convinced us that we overlooked or misapprehended matters in affirming the rejections of claims 1-9 and 15 under 35 U.S.C. § 103(a) as unpatentable in view of Shaya, Smith, and Greeninger. DECISION Accordingly, while we have granted Appellants’ request for rehearing to the extent that we have reconsidered our previous decision, the request is denied with respect to making any modification to the Decision. 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. § 1.136(a)(1)(iv) (2007). REHEARING DENIED Klh VISTA IP LAW GROUP LLP 2040 MAIN STREET, SUITE 710 IRVINE CA 92614