Ex Parte RaczDownload PDFPatent Trial and Appeal BoardSep 25, 201312139233 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte NICHOLAS SANDOR RACZ __________ Appeal 2011-008384 Application 12/139,233 Technology Center 3700 __________ Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-008384 Application 12/139,233 2 Appellant has requested rehearing of the decision entered July 1, 2013 (“Decision”), which affirmed rejections of claims 9-11 and 13-21 for obviousness. The request for rehearing is granted-in-part. DISCUSSION Appellant argues that while “Atil may be initially capable of being subjected to a distal end of the cannula sealed with sealant there is no suggestion in Atil or Roschak to do so” (Req. Reh’g 2). Appellant asserts that, in fact, it is not possible to treat the distal part of Atil with sealant as it has a closed end filled with metal (id. at 3). Thus, Appellant argues, the “terms ‘retrofitted’ and ‘said port at the distal end is sealed with a sealant’ add structure that differentiates the claimed retrofitted neural injection system from the combination of Atil and Roschak” (id.). Those arguments are not persuasive. Appellant’s argument, in essence, is that he disagrees with the Decision. A request for rehearing must do more than re-argue issues that have already been decided, even if the applicant disagrees with the previous decision. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52. An applicant dissatisfied with the outcome of a Board decision is entitled to appeal the decision, see 35 U.S.C. §§ 141 and 145, but is not entitled to have the same issue decided multiple times on the same record. Because Appellant has not pointed out any points that we overlooked or misunderstood, we decline to revisit our earlier conclusions as to claims 9-11, 13-15, 16, 17, and 18. Appeal 2011-008384 Application 12/139,233 3 Claims 20 and 21, however, stand on different footing. While Appellant rested on the arguments made with respect to claim 9 in the brief on appeal (App. Br. 22 and 24-25), we appreciate Appellant’s argument that claims 20 and 21 depend from claim 12 (Req. Reh’g 5). In our Decision, we reversed the obviousness rejection of claim 12 (Decision 9-10). Thus, in the interest of fairness, we revisit that Decision to the extent that we also reverse the obviousness rejection of claims 20 and 21 for the reasons set forth previously (id. at 8-9). Thus, we affirm the rejections of: claim 9 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Atil and Roschak; claims 16 and 17 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Atil, Roschak, and Lipov, as further combined with Watson; and claim 19 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Atil, Roschak, and Watson as further combined with Epstein. We reverse the rejection of claim 21 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Atil, Roschak, and Watson as further combined with Epstein. Appeal 2011-008384 Application 12/139,233 4 We also affirm the rejection of claims 10-15, 18, and 20 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Atil and Roschak, as further combined with Lipov as to claims 10, 11, 13-15, and 18, but reverse as to claims 12 and 20. REHEARING GRANTED-IN-PART cdc Copy with citationCopy as parenthetical citation