Ex Parte Smith et al

Patent Trial and Appeal Board

Apr 3, 2014

11743103 (P.T.A.B. Apr. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEITH SMITH, DANIEL TODD, YORK BAUR,
TODD SAWICKI, WILLIAM K. MCGRAW, and KEN SMITH
____________________

Appeal 2011-010829
Application 11/743,103
Technology Center 3600
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Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-010829
Application 11/743,103

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STATEMENT OF THE CASE
Appellants filed a Request for Rehearing/Reconsideration
(“Request”), dated January 7, 2014, of our Decision mailed November 7,
2013 (“Decision”), in which we reversed the Examiner’s rejection of
claims 1, 3, 5-8, 10, and 18-20 under 35 U.S.C. § 102(b) as anticipated by
Dedrick (US 5,752,238, iss. May 12, 1998), reversed the rejection of claim 9
under 35 U.S.C. § 103(a) as unpatentable over Dedrick and Official Notice,
and affirmed the rejection of claims 15-17 under 35 U.S.C. § 102(b) as
anticipated by Dedrick. We have jurisdiction over the Request under
35 U.S.C. § 6(b).

DISCUSSION
Appellants allege in the Request that the Board, in its Decision,
overlooked or misapprehended the following issues:
Does the Dedrick prior art reference as outlined in the
Examiner’s Answer and Final Office Action fail to disclose
each and every claim limitation recited in claims 1, 3, 5-8,
10, and 18-20 making them not anticipated under 35 U.S.C.
§ 102; and thus, patentable in light of Dedrick?

Does the Dedrick prior art reference and the Official Notice
taken by the Examiner as outlined in the Examiner's
Answer and Final Office Action fail to disclose each and
every claim limitation recited in claim 9 making it not
obvious under 35 [U.S.C. §] 103; and thus, patentable in
light of Dedrick and the Official Notice taken by the
Examiner?

(Request ii). Appellants maintain that claims 1, 3, 5-10, and 18-20 are
patentable over the cited references (id. at 9-34), and Appellants request that
the Board direct that a notice of allowance be issued with respect to these
Appeal 2011-010829
Application 11/743,103

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claims. Id. at 34. Alternatively, Appellants request that the Board find that
claims 1, 3, 5-8, 10, and 18-20 are patentable over Dedrick, and that claim 9
is patentable over a combination of Dedrick and Official Notice. Id. at
34-35.
Appellants appear under the misconception that the Board, in its
Decision, ruled that claims 1, 3, 5-10, and 18-20 are patentable and,
therefore, should be allowed. We did not.
The Board reversed the Examiner’s rejection of claims 1, 3, 5-8, 10,
and 18-20 under 35 U.S.C. § 102(b) as anticipated by Dedrick, and also
reversed the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Dedrick and Official Notice (Decision 7-8). But, in doing
so, the Board did not hold that the claims are patentable.
In an ex parte appeal, the Board’s primary role is review adverse
decisions of examiners, including the findings and conclusions made by the
Examiner. The Board does not allow claims of an application, and the
Board cannot direct an examiner to pass an application to issue.
See Ex parte Frye, 94 USPQ2d 1072, 1077 (BPAI 2010) (precedential);
cf. In re Voss, 557 F.2d 812, 816 n.11 (CCPA 1977) (“reversal is not a
mandate to the PTO to issue a patent and does not preclude the PTO from
reopening prosecution.”). See also 37 C.F.R. § 41.50(a)(1) (“The Board, in
its decision, may affirm or reverse the decision of the examiner in whole or
in part on the grounds and on the claims specified by the examiner”).
Our Decision is limited to the specific rejections and findings that
were before us for review, namely the rejection of claims 1, 3, 5-8, 10, and
15-20 under 35 U.S.C. § 102(b) as anticipated by Dedrick, and the rejection
of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Dedrick and
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Application 11/743,103

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Official Notice. No other rejections were before us, and we take no position
on any other rejections, e.g., a rejection of claims 1, 3, 5-10, and 15-20 under
35 U.S.C. § 103(a) as unpatentable over Dedrick and additional Official
Notice or new prior art.
We are not persuaded that we misapprehended or overlooked any
issues in rendering our Decision. Therefore, we decline to modify our
original Decision.

DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of Appellants’ Request, but is denied in
all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED

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