Ex Parte Mehrad et al

Board of Patent Appeals and Interferences

Sep 29, 2003

09120712 (B.P.A.I. Sep. 29, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FREIDOON MEHRAD and KYLE A. PICONE
_____________
Appeal No. 2001-1371
Application No. 09/120,712
______________
ON BRIEF
_______________
Before FLEMING, RUGGIERO, and GROSS, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants request that we reconsider our decision of July
31, 2003 wherein we sustained the Examiner’s obviousness-type
double patenting rejection of claims 1-7, 13 and 14 over claims
1-9 of U.S. Patent No. 5,659,900 to Mehrad. A review of
Appellants’ request reveals that no actual errors in our original
decision have been asserted by Appellants. Indeed, the sum and
substance of Appellants’ request is the submission of a terminal
Appeal No. 2001-1371
Application No. 09/120,712
2
disclaimer in an attempt to obviate the obviousness-type double
patenting rejection. While a timely filed terminal disclaimer in
compliance with 37 CFR § 1.321(c) may be effective in overcoming
an obviousness-type double patenting rejection, the review of the
appropriateness of any such terminal disclaimer lies within the
jurisdiction of the Examiner.
In response to Appellants’ request, we have reviewed our
original decision and find no errors therein, nor, as discussed
above, have Appellants alleged any errors exist. Accordingly, we
have granted Appellants’ request to the extent that we have
reconsidered our decision of July 31, 2003, but we deny the
request with respect to making any changes therein.
REMAND TO THE EXAMINER
As discussed supra, Appellants have included a terminal
disclaimer in their request for rehearing of the Board decision
of July 31, 2003. We hereby remand this application to the
Examiner for consideration of the terminal disclaimer and to take
any other appropriate action as necessary.
Appeal No. 2001-1371
Application No. 09/120,712
3
This application, by virtue of its “special” status requires
immediate action. See Manual of Patent Examining Procedure
(MPEP) 708.01 (8th Ed., Rev. 1, Feb. 2003). It is important that
the Board be informed promptly of any action affecting the appeal
in this application (e.g., abandonment, issue, reopening
prosecution).
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING - DENIED
REMANDED

MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JFR/hh
Appeal No. 2001-1371
Application No. 09/120,712
4
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