Ex Parte Santhanam et al

Board of Patent Appeals and Interferences

Jul 30, 2003

09002404 (B.P.A.I. Jul. 30, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VATSA SANTHANAM, DAVID GROSS,
and JOHN KWAN
____________
Appeal No. 2001-2302
Application No. 09/002,404
____________
HEARD: December 10, 2002
____________
Before FLEMING, DIXON, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants filed a paper on March 20, 2003 (Paper No. 21), styled “Petition to
Reopen Prosecution Under CFR 1.183 and 1.198,” during a period in which the instant
application remained under this board’s jurisdiction. We will treat the paper as a
Request for Rehearing under 37 CFR § 1.197(b), requesting reconsideration of our
decision entered January 23, 2003, wherein we sustained the final rejection of claims 1-
4, 7-9, 12, and 15 under 35 U.S.C. § 103.
Appeal No. 2001-2302
Application No. 09/002,404
-2-
Appellants submit that our decision, in effect, constituted a new ground of
rejection. We agreed with appellants, as set forth on page 4 of the prior decision, to the
extent that the reference (Markstein) failed to expressly disclose that the “working
precision” width is identical to the width of the floating-point registers of the associated
processor. We agreed, further, there was insufficient evidence in the record to
establish that proposition.
We interpreted language in claim 1 in a manner somewhat broader than the
examiner’s apparent reading, and pointed to teachings in Markstein that we found
would have suggested floating-point data types having floating-point objects with
sufficient range and precision such that the width of the memory representations of the
objects fell within the range claimed by appellants.
A rejection must be considered “new” if the appellant has not had a fair
opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300, 1302,
190 USPQ 425, 426 (CCPA 1976). Because we disagreed with the examiner with
respect to an apparent critical finding underlying the rejection, and because our
interpretation of language in the instant claims was different (i.e., broader) than the
examiner’s apparent interpretation, we will characterize our affirmance of the rejection
as a new ground of rejection under 37 CFR § 1.196(b).
Appellants point to nothing in our opinion that we consider as corresponding to
any allegation of error with respect to the merits of the decision. To the extent
appellants’ request may be construed in any fashion as challenging the merits of the
Appeal No. 2001-2302
Application No. 09/002,404
-3-
decision, we stress that we decline to disturb our original opinion other than our grant of
relief with respect a procedural matter, by deeming our affirmance a new ground of
rejection under 37 CFR § 1.196(b).
We also stress that no inference relating to any ultimate conclusion of
patentability or unpatentability should be drawn from our observation, on page 6 of the
prior decision, that appellants have provided no evidence in rebuttal to the rejection
under 35 U.S.C. § 103. We made the observation in connection with our conclusion
that the evidence relied upon by the rejection was sufficient to show prima facie
obviousness of the claimed invention. Any properly submitted rebuttal evidence must
be considered, but submission does not automatically overcome a case for
obviousness. Patentability is determined on the totality of the record, after evidence or
argument is submitted by the applicant in response. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We therefore incorporate herein our earlier decision, but characterize our
affirmance of the rejection as a new ground of rejection under 37 CFR § 1.196(b). We
hereby designate this decision to be, in effect, a new decision.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
Appeal No. 2001-2302
Application No. 09/002,404
-4-
37 CFR § 1.196(b) also provides that the appellant, 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 proceedings
(§ 1.197(c)) as to the rejected claim:
(1) Submit an appropriate amendment of the claim so rejected or a
showing of facts relating to the claim so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner
. . . .
(2) Request that the application be reheard under § 1.197(b) by the Board
of Patent Appeals and Interferences upon the same record. . . .
Appeal No. 2001-2302
Application No. 09/002,404
-5-
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
GRANTED-IN-PART
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-2302
Application No. 09/002,404
-6-
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