10746612 (B.P.A.I. Jun. 11, 2009)

Ex Parte Lu et al

Board of Patent Appeals and InterferencesJun 11, 2009

10746612 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SHAO LU, TERRY LIEW, NATHALIE GEFFROY-HYLAND, and MOHAMED KANJI ____________ Appeal 2008-004206 Application 10/746,612 Technology Center 1600 ____________ Decided: June 11, 2009 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING Appellants request rehearing under 37 C.F.R. § 41.52 of our Decision entered November 21, 2008 (“Dec.”) in which we affirmed-in-part the Examiner’s final rejection of claims 1-37, 47-51, 53, 54, and 57-94. Appeal 2008-004206 Application 10/746,612 Statement of Issue In the Board Decision entered November 21, 2008, the Examiner’s rejection of claims 54, 58, and 94 under 35 U.S.C. § 112, first paragraph, was affirmed. In affirming the rejection, we considered evidence that the claimed ethylenediamine/stearyl dimer tallate copolymer structuring agent was described in the Specification, but found the evidence insufficient (Dec. 9-10). Appellants have responded in this Request for Rehearing by submitting new evidence to “show” that the claimed subject matter is “fully supported by the specification as filed” (Req. Rhg. 3). The new evidence is an “Expert Report” and letter from the Cosmetic Toiletry and Fragrance Association (id.). Principles of Law 37 C.F.R. § 41.52 Rehearing. (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. . . . The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section. (2) Upon a showing of good cause, appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.50(b) are permitted. 2 Appeal 2008-004206 Application 10/746,612 Analysis As Appellants’ new evidence is not based on a recent relevant decision of either the Board or a Federal Court, or in response to a new ground of rejection, we will not consider it. See § 41.52(a)(1)-(3) (“evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3)”). Appellants also have not identified “with particularity” a point “believed to have been misapprehended or overlooked by the Board.” See § 41.52(a)(1) (“The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board”). Conclusion We decline to modify our original Decision entered November 21, 2008. REHEARING DENIED dm 3 Appeal 2008-004206 Application 10/746,612 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 4