Ex Parte Popp

Patent Trial and Appeal Board

Feb 5, 2014

12152409 (P.T.A.B. Feb. 5, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/152,409 05/14/2008 Shane M. Popp 5151
7590 02/05/2014
SMP Logic Systems
Intellectual Property Department
3460 Barry Avenue
Los Angeles, CA 90066
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
MAIL DATE DELIVERY MODE
02/05/2014 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 SHANE M. POPP
____________

Appeal 2012-001673
Application 12/152,409
Technology Center 2800
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001673
Application 12/152,409

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-10 under 35 U.S.C. § 103(a) as unpatentable over Popp
(US 2005/0251278 A1, published Nov. 10, 2005) in view of Miller (US 3,959,074,
issued May 25, 1976).2 We have jurisdiction under 35 U.S.C. § 6(b).
We sustain the above rejections based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Answer. We add
the following to address an argument made in the Reply Brief3.
In the Appeal Brief, Appellant expressly “concedes that Miller is a properly
cited reference in context of §103(a).” (App. Br. 10, note 8 (emphasis added).) In
the Reply Brief, Appellant argues Miller “is not analogous to the claimed invention
and thus is not citable as a reference under §103(a).” (Reply Br. 4 (emphasis
added).)
It is well established that arguments not raised in the opening Brief are
deemed waived. Cross Med. Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1320-21 n.3 (Fed. Cir. 2005). “The reply brief is not an opportunity to
make arguments that could have been made during prosecution, but were not. Nor
is the reply brief an opportunity to make arguments that could have been made in
the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative).
Appellants have not explained why the argument that Miller is non-
analogous art was not raised in the Appeal Brief. Therefore, we decline to address
this belated argument. In any event, we agree with the Examiner’s finding that

1 Final Office Action mailed Feb. 24, 2011.
2 Appeal Brief filed May 2, 2011 (“App. Br.”).
3 Filed Aug. 16, 2011 (“Reply Br.”).
Appeal 2012-001673
Application 12/152,409

3
Miller is analogous art because the reference “is in the same field of endeavor as
pharmaceutical manufacturing disclosed by Popp.” (Ans.4 9.)
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
bar

4 Examiner’s Answer filed Jul. 25, 2011.