15159726 - (R) (P.T.A.B. Aug. 3, 2020)

Indiana Soybean Alliance, Inc.

Patent Trials and Appeals BoardAug 3, 2020

15159726 - (R) (P.T.A.B. Aug. 3, 2020)

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. 15/159,726 05/19/2016 H. William Harris 8660-0121 8336 25267 7590 08/03/2020 BOSE MCKINNEY & EVANS LLP 111 MONUMENT CIRCLE, SUITE 2700 INDIANAPOLIS, IN 46204 EXAMINER CHUI, MEI PING ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 08/03/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PATENT@BOSELAW.COM mbartol@boselaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte H. WILLIAM HARRIS and STEVEN R. CRAIG1 ____________ Appeal 2019-004894 Application 15/159,726 Technology Center 1600 ____________ Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Indiana Soybean Alliance, Inc. as the real party-in-interest. App. Br. 1. Appeal 2019-004894 Application 15/159,726 2 ANALYSIS Appellant filed a Request for Rehearing (hereinafter the “Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of May 21, 2020 (hereinafter the “Decision”). The Decision affirmed the Examiner’s rejection of claims 1, 2, 4–13, 15–18, 26, and 27 as unpatentable under 35 U.S.C. § 103 over the combination of Romarheim et al. (WO 2010/128312 A2, November 11, 2010) (“Romarheim”) and Sweeney (US 3,916,832, November 4, 1975) (“Sweeney”). The Decision also affirmed the Examiner’s rejection of claim 3 as unpatentable under 35 U.S.C. § 103 over the combination of Romarheim, Sweeney, and Miyota et al. (US 2005/0142248 A1, June 30, 2005) (“Miyota”), and claims 14, 19, and 29 as unpatentable under 35 U.S.C. § 103 over the combination of Romarheim, Sweeney, and Abe et al. (US 5,739,006, April 14, 1998) (“Abe”). Appellant argues the Board relied on new facts and rationale in affirming the Examiner’s rejections. See id. at 3. Appellant therefore requests the Board designate the Decision as including new grounds of rejection. Id. at 2. Appellant does not dispute the substance of the Decision. See generally id. Upon review of the record, we grant Appellant’s request, and designate new grounds of rejection for the affirmance of each ground of rejection in the Decision. Appeal 2019-004894 Application 15/159,726 3 DECISION We grant Appellant’s requested relief and designate our affirmance of the Examiner’s rejections as new grounds of rejection. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 4–13, 15–18, 26, 27 103 Romarheim, Sweeney 1, 2, 4–13, 15–18, 26, 27 3 103 Romarheim, Sweeney, Miyota 3 14, 19, 29 103 Romarheim, Sweeney, Abe 14, 19, 29 Overall Outcome 1–19, 26, 27, 29 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 1, 2, 4– 13, 15– 18, 26, 27 103 Romarheim, Sweeney 1, 2, 4–13, 15–18, 26, 27 1, 2, 4–13, 15–18, 26, 27 3 103 Romarheim, Sweeney, Miyota 3 3 14, 19, 29 103 Romarheim, Sweeney, Abe 14, 19, 29 14, 19, 29 Overall Outcome 1–19, 26, 27, 29 1–19, 26, 27, 29 We have entered new grounds of rejection for claims 1–19, 26, 27, and 29 pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that Appeal 2019-004894 Application 15/159,726 4 “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that 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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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). See 37 C.F.R. § 1.136(a)(1)(iv). GRANTED 37 C.F.R. § 41.50(b)