John Power et al.Download PDFPatent Trials and Appeals BoardJan 10, 202012583256 - (R) (P.T.A.B. Jan. 10, 2020) Copy Citation 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. 12/583,256 08/17/2009 John Power 016770-006712.10 6515 21968 7590 01/10/2020 NEKTAR THERAPEUTICS 455 Mission Bay Blvd., South, Suite 100 San Francisco, CA 94158 EXAMINER LOUIS, LATOYA M ART UNIT PAPER NUMBER 3785 MAIL DATE DELIVERY MODE 01/10/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN POWER, DESMOND REGAN, and DECLAN MORAN ____________________ Appeal 2018-002136 Application 12/583,256 Technology Center 3700 ____________________ Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2018-002136 Application 12/583,256 2 STATEMENT OF THE CASE This is a response to Appellant’s Request for Rehearing (“Request” or “Req.”) of the Board’s Decision of October 11, 2019 (“Decision” or “Dec.”). Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. OPINION Appellant takes issue with our statement in the Decision that “Appellant does not explain why the embodiment depicted in Figure 5 of Heinonen, on which the Examiner specifically relies to teach the claimed gravitational flow of liquid medicament from a reservoir to an aerosol generator [Ans. 15], does not teach this limitation.” Req. 2 (quoting Dec. 5). According to Appellant, “[p]ages 8–12 of the Appeal Brief provided a full explanation of why Heinonen does not teach the claimed gravitational flow features.” Id. This is not persuasive. Nowhere in pages 8–12 of the Appeal Brief does Appellant cite to, much less discuss, the embodiment depicted in Heinonen Figure 5 (Appellant does not dispute that it is this embodiment on which the Examiner relied to teach the claimed gravitational flow of liquid medicament from a reservoir to an aerosol generator). See, e.g., id. at 10 (citing portions of Heinonen that discuss embodiments depicted in Figures 2 and 7 of Heinonen). Appellant goes on to address, for the first time, Heinonen’s Figure 5 embodiment. Req. 3–4. This is a new argument not presented by Appellant in the Appeal Brief, and thus will not be considered on reconsideration. “A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998); see 37 C.F.R. § 41.52 Appeal 2018-002136 Application 12/583,256 3 (“Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.”).1 DECISION For the above reasons, Appellant’s request for rehearing is denied. 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 1 Even if we were to consider Appellant’s remarks regarding Heinonen’s Figure 5 embodiment, they would not persuade us that we overlooked or misapprehended any matter in rendering our Decision. For example, Appellant acknowledges that in this embodiment liquid medicament flows from reservoir 34a to the nebulizer via “hydrostatic pressure,” but does not explain how this differs from the claimed gravitational flow of liquid from the reservoir to the aerosol generator. Copy with citationCopy as parenthetical citation