11039217 (B.P.A.I. Jul. 20, 2011)

Ex Parte Rooshenas

Board of Patent Appeals and InterferencesJul 20, 2011

11039217 (B.P.A.I. Jul. 20, 2011)

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. 11/039,217 01/18/2005 Rezvan Rooshenas LCT110003000 9698 22891 7590 07/21/2011 LAW OFFICE OF DELIO & PETERSON, LLC. 121 WHITNEY AVENUE NEW HAVEN, CT 06510 EXAMINER SELLERS, ROBERT E ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 07/21/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte REZVAN ROOSHENAS ____________ Appeal 2010-002602 Application 11/039,217 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of our Decision of May 12, 2011. In the Decision, we affirmed the Examinerâ€™s decision to reject all the appealed claims under 35 U.S.C. Â§ 103(a) and on grounds of non-statutory obviousness-type double patenting. In accordance with Appellantâ€™s Request, we have reconsidered our Decision in light of the Request, but we find no reason to modify our Decision. A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Appeal 2010-002602 Application 11/039,217 2 Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs are not permitted in the request for rehearing except as permitted by 37 C.F.R. Â§ 41.52(a)(2) and (3). See 37 C.F.R. Â§ 41.52(a)(1) (2007). Like new evidence presented in a Request, an argument presented for the first time in a Request but not advanced in the Appeal Brief or appropriately furnished in a Reply Brief (when one has been submitted) is not properly before the Board, at least in part, because the Examiner is not afforded a timely opportunity to respond and the Board is deprived of any such response that may have been supplied by the Examiner to the belatedly presented new argument. See In re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986). "A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration." Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (BPAI 1982), aff'd, 714 F.2d 160 (Fed. Cir. 1983) (table)). Here, we observe that the subject Request does not follow this protocol as prohibited new evidence (ARALDITE 6010 Product Data Sheet) and new argument, including argument based on the new evidence, has been relied on in the Request (Req. 2). We decline to consider such. Moreover, the expressed general disagreement with our Decision followed by remarks directed to the Examiner fails to state with particularity the points believed to have been misapprehended or overlooked by the Board in rendering its Decision (see generally Req.). For example the Request does not point out in each instance where it may be believed the Board misapprehended or overlooked a particular point and where the Appeal 2010-002602 Application 11/039,217 3 arguments were originally presented respecting that point in the Appeal Brief or when appropriate, only in a Reply Brief (see the Request in its entirety). For instance, we pointed out in the Decision that: By arguing insolubility, Appellant has not established that the epoxy resin of EP'782, Johnson, and/or JP '755 are not water dispersible, as claimed (Br. 8-9). Moreover, Appellant's arguments concerning this recited epoxy polymer (resin) characteristic are undercut by Appellant's disclosure indicating that one of ordinary skill in the art knows how to disperse epoxy resin (Spec. 6, ll. 15-23). Dec. 7. Appellant is not permitted to establish otherwise by furnishing new argument and evidence in the Request. For the reasons stated above and in the Decision, Appellant has not particularly pointed to any harmful error in our Decision affirming the Examinerâ€™s obviousness rejection of the appealed claims based on any substantiated arguments timely presented in the Appeal Brief. We have granted Appellantâ€™s Request to the extent we have reconsidered our Decision as indicated above, but we decline to make any change therein. DENIED ssl