Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardDec 11, 201311735531 (P.T.A.B. Dec. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte CHIH-CHENG YANG and YUNG SHUN LIANG _____________ Appeal 2011-002509 Application 11/735,531 Technology Center 2100 ______________ Before ROBERT E. NAPPI, BRYAN F. MOORE, and GREGG I. ANDERSON, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-002509 Application 11/735,531 2 Appellants have filed a paper under 37 C.F.R. § 41.52 requesting that we reconsider our decision of September 16, 2013, where we affirmed the rejections of claims 1, 5 through 11, 15, 16, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Marisetty (US 2007/0061634 A1, Mar. 15, 2007) and Huber (US 2008/0082661 A1, Apr. 3, 2008). We reconsider our decision in light of Appellants’ Request for Rehearing, but we decline to change the decision. ISSUES AND ANALYSIS Appellants contend that our September 16, 2013 decision erred by giving the Huber published application an effective filing date of the provisional application from which Huber derives priority. Specifically, Appellants argue that by not showing that paragraph 0036 of the Huber published application is in the Huber provision application, we misapplied the precedent set forth in Ex parte Yamaguchi.1 Reh’g Req. 1-2. We disagree, while Ex parte Yamaguchi included a finding which compared the disclosure of the issued patent to the provisional application, the holding that the patent was entitled the benefit of the provisional was not based solely on that holding. As we stated in Ex parte Yamaguchi, it is the intent of 35 U.S.C. §§ 111(b)(8) and 102(e) that a U.S. Patent or a U.S. Application Publication is entitled to the benefit of the filing data of a provision application under 35 U.S.C. § 119(e).2 Further, as we identified on page 5 of the September 16, 2013 decision, the Examiner provided an explanation of 1 Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential). 2 Id. at 1609. Appeal 2011-002509 Application 11/735,531 3 how the provisional application provides support for the relevant teachings in Huber’s published application. Accordingly, Appellants have not persuaded us of error in our September 16, 2013 decision. CONCLUSION For the aforementioned reasons, Appellants’ contentions have not persuaded us of error in our September 16, 2013 decision. Accordingly, while we have granted Appellants’ Request for Rehearing to the extent that we have reconsidered our decision, that request is denied with respect to making any changes therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED msc Copy with citationCopy as parenthetical citation