Ex Parte Leimbach et al

Board of Patent Appeals and Interferences

Dec 30, 2008

10465962 (B.P.A.I. Dec. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KLAUS-DIETER LEIMBACH,
FALK HECKER, OLIVER JUNDT, and HERBERT SCHRAMM1
____________________

Appeal 2008-1032
Application 10/465,962
Technology Center 3600
____________________

Decided: December 30, 2008
____________________

Before JAMESON LEE, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The real party in interest is Robert Bosch GmbH.
Appeal 2008-1032
Application 10/465,962

2
A. STATEMENT OF THE CASE
The Appellant requests rehearing under 37 C.F.R. § 41.52 of a
Decision on Appeal entered July 28, 2008 (the Decision). Specifically, the
Appellant requests rehearing on the ground that the Decision should have
included a statement that the Boards’ affirmance of the rejection of claims 8-
11, 14, and 20 under 35 U.S.C. § 103(a) is a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b). The Appellant also requests the Board to
designate its decision on rehearing as a “new decision.”
B. ANALYSIS
In the Decision, the Board affirmed the Examiner’s rejection of claims
8-11, 14, and 20 as unpatentable under 35 U.S.C. § 103(a) as unpatentable
over U.S. 6,223,114 to Boros et al. (Boros) and WO 97/39928.
The Appellant contends that the Board’s obviousness analysis in
affirming the rejection of claims 8-11, 14, and 20 is premised on knowledge
of a person of ordinary skill in the art that was not relied upon by the
Examiner. According to the Appellant, the Board’s analysis constitutes
knowledge of the Board of grounds for rejecting claims 8-11, 14, and 20 that
were not involved in the appeal and the Decision should have included a
statement to that effect.
In filing the Request for Rehearing under 37 C.F.R. § 41.52(a), the
Appellants’ had the opportunity and obligation to “state with particularity
the points believed to have been misapprehended or overlooked by the
Board.” However, the Appellant does not argue the merits of the rejection
of claims 8-11, 14, and 20 as explained by the Board or contend that the
Board “misapprehended or overlooked” any points relating to the merits of
Appeal 2008-1032
Application 10/465,962

3
the rejection as explained by the Board. See 37 C.F.R. § 41.52(a)(1).
Instead, the Appellant requests that they be afforded the procedural options
available under 37 C.F.R. § 41.50(b)(1) for responding to the alleged new
ground of rejection. (Request 1:11-16.)
The affirmance of a conclusion of obviousness based on prior art of
record may be made on another basis. See In re Baxter Travenol Labs, 952
F.2d 388, 391 (Fed. Cir. 1991). Here, the Board affirmed the rejection of
Appellant’s claims 8-11, 14, and 20 as obvious based on the same references
applied by the Examiner along with analysis reflecting a skilled artisan’s
recognition of the teachings of those references. That basis for affirming
does not establish the Board’s “knowledge of any ground not involved in the
appeal for rejecting any pending claim” or render the procedural options
available under 37 C.F.R. § 41.50(b). However, in situations involving a
possible misunderstanding of a procedural matter, the Board, at its
discretion, may follow an “abundance of fairness policy.” See Ex parte
Letts, 88 USPQ2d 1854, 1859 (BPAI 2008).
In the circumstances of this case, we exercise discretion to grant the
Appellant’s request to designate the Decision’s affirmance of the rejection of
claims 8-11, 14, and 20 under 35 U.S.C. § 103(a) as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).
This decision on rehearing does not constitute a new decision on
appeal. Nor does it turn the original Decision into a new decision.
Accordingly, pursuant to 37 C.F.R. § 41.52(a)(1), no request for rehearing
from this decision on rehearing is permitted. Also, because the Appellant
did not argue in the rehearing request the merits of any rejection as
explained by the Board, it is not entitled to any further relief under 37 C.F.R.
Appeal 2008-1032
Application 10/465,962

4
§ 41.50(b)(2), once the original decision has been modified to designate the
affirmance of the obviousness rejection of claims 8-11, 14 and 20 as a new
ground of rejection.
C. CONCLUSION
The Appellant’s Request for Rehearing is granted but only to the
extent as ordered below.
The procedure under 37 C.F.R. § 41.50(b)(2) for responding to a new
ground of rejection is not available to the Appellant.
D. ORDER
The Board’s affirmance of the rejection of claims 8-11, 14, and 20
under 35 U.S.C. § 103(a) as unpatentable over Boros and WO 97/39928 is
designated as a new ground of rejection under to 37 C.F.R. § 41.50(b).
Pursuant to the applicable sections of 37 C.F.R. § 41.50(b), the
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THIS
DECISION, must exercise the following option with respect to the new
ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner….

GRANTED-IN-PART, 37 C.F.R. § 41.50(b)

Appeal 2008-1032
Application 10/465,962

5

ack

cc:

KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004