Ex Parte Muth

Board of Patent Appeals and Interferences

May 28, 2010

10534164 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MATTHIAS MUTH
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Appeal 2009-002172
Application 10/534,164
Technology Center 2100
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Decided: May 28, 2010
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Before JOHN A. JEFFERY, JAMES D. THOMAS, and LEE E. BARRETT,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing of our decision entered
January 12, 2010. Appellant requests that we modify our decision to state
that: (1) the Examiner was reversed; (2) the decision constitutes a new
ground of rejection of claim 1 under 37 C.F.R. § 41.50(b); and (3) the
rejection of dependent claims 2-6 was not addressed.
The Request for Rehearing is granted.
Appeal 2009-002172
Application 10/534,164

2
ANALYSIS
Upon reconsideration, we conclude that our original decision departed
from the rejection stated by the Examiner substantially enough that it would
be unfair not to state that the Examiner's rejection of claims 1-6 is reversed
and not to denominate our decision a new ground of rejection as to claim 1.
See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (the "ultimate
criterion" of whether a rejection is new is "whether appellants have had fair
opportunity to react to the thrust of the rejection.").
The Examiner rejected independent claim 1 and dependent claim 6
under 35 U.S.C. § 103(a) based on Feuerstraeter, Appellant's admitted prior
art (AAPA) at Spec. 1, lines 7-17, and Ishikuri. Our decision concluded that
the Examiner erred in finding that: (1) the AAPA does not describe a system
base chip; (2) Ishikuri teaches a system voltage supply; and (3) a transceiver
performs a monitoring function. Op. 10. We found that the AAPA taught
these limitations (Op. 10), however, in doing so, we relied upon a portion of
the AAPA at Spec. 2, lines 11-14 not relied upon by the Examiner.
Although Appellant is charged with knowledge of his own Specification,
since the Examiner's rejection was not based on the specific teaching of the
AAPA that we relied upon, we agree that the Examiner's stated rejection of
claims 1-6 should be reversed and our decision should be denominated a
new ground of rejection of claim 1.
As to the rejection of dependent claims 2-6, we did not address these
claims because their patentability was not separately argued (see Br. 8).
However, since we denominate our decision a new ground of rejection as to
claim 1, we acknowledge that the patentability of dependent claims 2-6 has
Appeal 2009-002172
Application 10/534,164

3
not been addressed. We leave it to the Examiner to consider the
patentability of dependent claims 2-6.

CONCLUSION
The Request for Rehearing is granted. Accordingly, our original
decision is modified to hold: (1) the Examiner's rejections of claims 1-6
under 35 U.S.C. § 103(a) are reversed; and (2) a new ground of rejection is
entered as to only claim 1.

GRANTED

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