Ex Parte LITMANDownload PDFPatent Trials and Appeals BoardJul 8, 201914805863 - (D) (P.T.A.B. Jul. 8, 2019) Copy Citation UNITED ST ATES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/805,863 07/22/2015 97462 7590 07/09/2019 Mark A. Litman & Associates, P.A. 700 I Cahill Road, Ste. 15A Edina, MN 55439 FIRST NAMED INVENTOR Mark A. LITMAN 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. 004.006US2 7247 EXAMINER WILLIAMS, ROSS A ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 07/09/2019 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 PATENT TRIAL AND APPEAL BOARD Ex parte MARK A. LITMAN1 Appeal 2019-0001132 Application 14/805,863 Technology Center 3700 Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUESTS FOR REHEARING 1 "The real party in interest in this Appeal is the sole inventor of this Application, Mark Alan Litman, also the counsel of Record." App. Br. 3. Thus, for the purposes of this appeal, we designate Mark Alan Litman as the "Appellant." 2 Appeal No. 2019-001585 pertains to Application No. 14/789,995, which was filed on July 2, 2015 and claims priority to the same three provisional patent applications as the present application. See the Specification of both cases. Appeal 2019-000113 Application 14/805,863 STATEMENT OF THE CASE Appellant filed a Request for Rehearing ("Req. Reh' g") dated May 7, 2019, and an Additional Request for Rehearing ("Add. Req. Reh'g") dated May 14, 2019, under 37 C.F.R. § 41.52, of the Decision on Appeal mailed May 2, 2019 ("Decision"). 3 This Decision sustained the Examiner's rejection of claims 1-23 as being directed to ineligible subject matter. See Decision 15. Appellant states that these Requests are "made to assure that issues not addressed in the decision or improperly addressed in the decision will be made to perfect the file history for Appeal to the CAFC." Req. Reh'g l; Add. Req. Reh'g 1. Upon consideration of Appellant's Requests, we do not modify our opinion. A REQUEST FOR REHEARING A request for rehearing "must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board, hereinafter "Board"]." See 37 C.F.R. § 41.52(a)(l). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs "are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section." In addition, a request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in 3 Appellant's comments disparaging the Office are unhelpful. See, e.g., Add. Req. Reh'g 3 (referring to Office personnel as "incompetent"). We remind Appellant that "[ e Jach party must act with courtesy and decorum in all proceedings before the Board, including interactions with other parties." 37 C.F.R. § 41.l(c). 2 Appeal 2019-000113 Application 14/805,863 rendering its Decision. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Initial Request for Rehearing The Request is essentially a disagreement with our Decision and the state of the law regarding patent eligibility, which, as noted above, is not a proper basis for rehearing. Moreover, Appellant does not "state with particularity the points believed to have been misapprehended or overlooked by the Board," as required by our rules. 37 CFR § 41.52(a)(l). Rather, Appellant's contentions are presented as vague generalities that are not useful for review on rehearing. Further, Appellant provides no citation to any of its briefing in the appeal from which this rehearing is requested. Appellant's Request also includes a section specifically addressing claims 11 and 12. See Req. Reh'g 6-10. Claims 11 and 12 were not separately addressed in Appellant's Appeal and Reply briefs.4 Noting this, the Board selected "claim 1 for review, with the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv)." Decision 4. As such, we decline to review the above arguments specific to claims 11 and 12 as not being timely made. See 37 C.F.R. § 41.52(a)(l) (in a rehearing, "arguments not raised, and Evidence not previously relied upon, pursuant to § § 41.3 7 [" Appeal brief'], 41.41 ["Reply brief'], or 41.4 7 ["Oral hearing"] are not permitted in the request for rehearing except as permitted"). 4 37 C.F.R. § 41.47(e)(l) states that at oral hearing, Appellant may only "present argument that has been relied upon in the brief or reply brief except as permitted." 3 Appeal 2019-000113 Application 14/805,863 Additional Request for Rehearing Appellant's Additional Request for Rehearing is improper. See 37 CFR § 41.52 (a)(l) ("Appellant may file a single request for rehearing within two months of the date of the original decisic;m of the Board.") (emphasis added). We do not consider Appellant's Additional Request for Rehearing. DECISION Appellant's Request for Rehearing has been granted to the extent that the Board reconsidered its Decision in light of the statements made in this Request, but is denied with respect to the Board making any modification to the Decision. DENIED 4 Copy with citationCopy as parenthetical citation