Ex Parte Macinnes et alDownload PDFPatent Trial and Appeal BoardJan 10, 201813153300 (P.T.A.B. Jan. 10, 2018) Copy Citation 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. 13/153,300 06/03/2011 Susan E. Macinnes BPMDL0005JT.P6 (10055U CI 8681 27939 7590 01/11/2018 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER POON, ROBERT ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 01/11/2018 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 SUSAN E. MACINNES, JENNIFER E. TOMES, and SARAH ZYBURT ____________ Appeal 2014-007582 Application 13/153,300 Technology Center 3700 ____________ Before ANTON W. FETTING, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 This decision references the Appellants’ Appeal Brief (“Appeal Br.,” filed Dec. 31, 2013) and the Examiner’s Answer (“Ans.,” mailed Apr. 23, 2014) and Final Office Action (“Final Act.,” mailed Aug. 6, 2013). Appeal 2014-007582 Application 13/153,300 2 STATEMENT OF THE CASE The Appellants filed Remarks and amended claims on December 9, 2016, in response to our Decision on Appeal mailed October 12, 2016, in which we reversed the Examiner’s rejections of claim 12 under 35 U.S.C. § 102 and entered a new ground of rejection under 35 U.S.C. § 103. These Remarks and amended claims are considered a Request for Rehearing (hereafter referred to as the “Request”) under 37 C.F.R. § 41.52(a)(1). See Decision on Petition 3–4, mailed November 14, 2017. We have jurisdiction over the Request under 35 U.S.C. § 6(b). We deny the Request. ANALYSIS We note at the outset that a Request for Rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). A Request for Rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. With regards to claim 12, the Appellants contend that the Board incorrectly held that “the claimed printed matter was not functionally related to the substrate.” Request 10. Although the Appellants disagree with the Board’s Decision (id.), the Appellants do not provide specific points, reasons, or arguments as why the Board’s Decision is in error. Rather, the Appellants merely state that, in their opinion, the Board is incorrect. Id. With regards to claims 16–18, 20, and 23, we note that arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in §§ 41.52(a)(2) though (a)(4). 37 C.F.R. § 41.52(a)(1). The Appellants specifically only appealed the Examiner’s rejections of claim 12 and did not Appeal 2014-007582 Application 13/153,300 3 appeal the Examiner’s rejections of any other claims. Appeal Br. 8, 9. As such, any arguments regarding these claims (see Request 11) are not permitted. Thus, we are not persuaded that we misapprehended or overlooked any points of law or fact in rendering our Decision. Therefore, we decline to modify our original Decision. DECISION The Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the Appellants’ Request, but is denied in all other respects. 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). DENIED Copy with citationCopy as parenthetical citation