Ex Parte Parkes et al

Patent Trials and Appeals Board

Apr 30, 2014

11423108 - (D) (P.T.A.B. Apr. 30, 2014)

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.
11/423,108 06/08/2006 Nigel Parkes 010770.00062 5242
22908 7590 04/30/2014
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
04/30/2014 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 NIGEL PARKES, RUSSELL BOXALL,
PHILIP EDWARD HARRIS and RICHARD JAMES BLITON
__________

Appeal 2012-009696
Application 11/423,108
Technology Center 1700
____________

Before CHUNG K. PAK, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-009696
Application 11/423,108

2
STATEMENT OF THE CASE
This is in response to a Request for Rehearing (“Request”), dated
January 29, 2014, of our Decision, mailed November 29, 2013 (“Decision”),
wherein we affirmed the Examiner’s § 103 rejection of all appealed claims.
Appellants request reconsideration of the affirmance of the rejections
of claims 1-12, 24-26, and 28-30 under 35 U.S.C. § 103(a). Request 1.
Appellants contend that the Decision contains an undesignated new ground
of rejection. Id. Appellants further contend that the Board misapprehended
the references and the conclusions to be drawn as to the Examples of Cox.1
Id.
We have reconsidered our Decision of November 29, 2013. We have
thoroughly reviewed the arguments set forth by Appellants in the Request.
In light of Appellants’ request, we will denominate the affirmance as
involving a new ground of rejection under 37 C.F.R. § 41.50(b), as our
decision relies on additional findings of fact that are materially different than
those relied upon by Examiner.
Accordingly, we grant the Appellants’ Request for Rehearing to the
extent that we denominate our Decision as involving a new ground of
rejection. We do not make any other change to the Decision.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”

1 US 6,713,411 B2, issued March 30, 2004.
Appeal 2012-009696
Application 11/423,108

3
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceedings will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceedings be
reheard under § 41.52 by the Board upon the same record. . . .
GRANTED
37 C.F.R. § 41.50(b)

tc