Ex parte TAGG

Board of Patent Appeals and Interferences

Apr 25, 2000

08739065 (B.P.A.I. Apr. 25, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD L. TAGG
________________
Appeal No. 1998-3315
Application 08/739,065
________________
HEARD: FEBRUARY 7, 2000
________________
Before FRANKFORT, STAAB and NASE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This case comes before us again on request for rehearing
of our decision mailed February 17, 2000, in which we reversed
the examiner’s rejection of claim 1 under 35 U.S.C. § 112,
first paragraph, and affirmed the examiner’s rejection of
claim 1 under 35 U.S.C. § 112, second paragraph.
Appeal No. 1998-3315
Application 08/739,065
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The examiner’s rationale for rejecting claim 1 under 35
U.S.C. § 112, second paragraph, was that the term “sides of
the socket forming opening” lacked proper antecedent basis.
In treating the examiner’s rejection of claim 1 under 35
U.S.C.
§ 112, second paragraph, we stated on pages 7 and 8 of our
decision that neither appellant’s brief nor appellant’s reply
brief addressed this rejection, that appellant has in effect
acquiesced in the rejection, and that, accordingly, this
rejection was being summarily affirmed.
Appellant now, for the first time, directly challenges
the examiner’s rationale. Specifically, appellant now asserts
that
the term “sides” is being used for the first time
[in the claim] and is not being stated as “said
sides” but simply as “sides” of the socket-forming
opening in the base. Applicant believes that this
is acceptable language and that the Examiner’s
Section 112, second paragraph, rejection is in err
[sic, error] [request, page 1].
The attempt to raise this issue in the request for
rehearing is improper and will not be considered. 37 CFR
1.197(b) requires a request for rehearing to state with
Appeal No. 1998-3315
Application 08/739,065
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particularity the points believed to have been misapprehended
or overlooked in rendering the decision. Since appellant
heretofore did not dispute the examiner’s conclusion that the
terminology “sides of the socket
forming opening” appearing in claim 1 made the claim
indefinite within the meaning of the second paragraph of 35
U.S.C. § 112, this point could not have been overlooked or
misapprehended in rendering the decision. Moreover and in any
event, we do not necessarily agree with appellant’s newly
presented argument as to why the claim language in question
satisfies the requirements of the second paragraph of 35
U.S.C. § 112.
Appellant asks in the alternative that we enter the
amendment attached to the request and reconsider the affirmed
35 U.S.C. § 112, second paragraph, rejection of claim 1 in
light of said amendment.
We have no authority to reopen prosecution or to enter
claim amendments. Moreover, it is not the policy of the Board
to consider the effect of amendments filed after a decision
Appeal No. 1998-3315
Application 08/739,065
The examiner may, however, recommend entry of the1
amendment if he considers that it obviously places the case in
condition for allowance. See MPEP § 1214.07
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has been rendered in that we do not have the benefit of the
examiner’s input as to the merits of the amendments.1
Appellant’s request for rehearing is granted to the
extent of reconsidering our decision, but is denied with
respect to making any change therein.
DENIED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1998-3315
Application 08/739,065
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)
)
JEFFREY V. NASE )
Administrative Patent Judge )
ljs/ki
Appeal No. 1998-3315
Application 08/739,065
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Harness, Dickey and Pierce
P. O. Box 828
Bloomfield Hills, MI 48303