Ex Parte Moncla et al

Board of Patent Appeals and Interferences

Jun 22, 2010

10925693 (B.P.A.I. Jun. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRAD M. MONCLA, MATTHEW J. KALINOWSKI,
DAVE SPETH, CHARLES DIEHL, DALE SCHMIDT,
KEVIN D. MAAK and RONALD WEVERS
____________

Appeal 2009-006448
Application 10/925,693
Technology Center 1700
____________

Decided: June 22, 2010
____________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE and ALLEN R. MACDONALD, Vice-Chief
Administrative Patent Judges, MICHAEL P. COLAIANNI, BEVERLY A.
FRANKLIN, LINDA M. GAUDETTE, and KAREN M. HASTINGS,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
The application on appeal is before the Board on remand from the
U.S. Court of Appeals for the Federal Circuit. In re Moncla, Appeal 2010-
1126 (Fed. Cir. May 6, 2010, Order). The Board panel which originally
heard the appeal consisted of Judges Franklin, Gaudette, and Hastings.
Appeal 2009-006448
Application 10/925,693

Chief Judge Fleming, acting on behalf of the Director, has designated an
expanded panel to decide the appeal on remand.
BACKGROUND
In an Office Action mailed Nov. 21, 2006, the Examiner finally
rejected all pending claims as follows: claims 9, 10, 12, 32, 35, 57-62 and
64-72 under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a), and claims 9,
10, 12, 32, 33, 35, 57-62 and 64-72 (provisionally) on the ground of non-
statutory obviousness-type double-patenting over claims 1-42 of later-filed,
co-pending Application Serial No. 11/068,573. Appellants appealed to the
Board pursuant to 37 C.F.R. § 41.31(a), requesting review of all three
grounds of rejection. (Appeal Brief, filed Apr. 20, 2007, 14.)
The original Board panel entered a final Decision (mailed Sep. 23,
2009 (hereinafter “prior Decision”)) reversing the rejections under 35 U.S.C.
§§ 102(b) and 103(a), and affirming the provisional, obviousness-type
double-patenting rejection. The overall decision of the original Board panel
was thus an affirmance of the Examiner’s decision rejecting all pending
claims. See 37 C.F.R. § 41.77. Appellants appealed to the Federal Circuit
pursuant to 35 U.S.C. §§ 141 and 142, requesting reversal of the Board’s
decision to affirm the provisional, obviousness-type double-patenting
rejection. (Brief of Appellants, filed Feb. 16, 2010, 12.)
After the filing of Appellants’ Brief in Appeal 2010-1126, the
Director and Appellants determined it would be in the best interest of the
parties and the Federal Circuit to remand the case back to the USPTO and,
accordingly, filed a “Joint Motion for Remand.” The Federal Circuit granted
the motion (see supra Order), and the appeal is now before this expanded
panel.
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Appeal 2009-006448
Application 10/925,693

ORDER
The prior Decision by the Board reversed the Examiner’s
rejections under 35 U.S.C. § 102 and § 103. The only remaining rejection is
a provisional non-statutory double patenting rejection. We conclude that in
this circumstance it was premature for the original Board panel to address
the Examiner’s provisional rejection of the claims.
Therefore, it is ORDERED:
1. The decision of the original Board panel affirming the provisional
rejection of claims 9, 10, 12, 32, 33, 35, 57-62 and 64-72 on the ground of
non-statutory obviousness-type double-patenting over claims 1-42 of later-
filed, co-pending Application Serial No. 11/068,573 is vacated.
2. The overall decision of the original Board panel affirming the
Examiner’s decision to reject all of the pending claims is vacated.
3. We enter a new Decision in which:
a. The decision of the original Board panel reversing the
rejections under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a)
remains unchanged; and
b. We do not reach the Examiner’s provisional rejection of
claims 9, 10, 12, 32, 33, 35, 57-62 and 64-72 on the ground of non-
statutory obviousness-type double-patenting.
REVERSED

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