QIAGEN GmbHDownload PDFPatent Trials and Appeals BoardJun 11, 202014423062 - (R) (P.T.A.B. Jun. 11, 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. 14/423,062 02/20/2015 Kalle Günther 770025.464USPC 2467 500 7590 06/11/2020 SEED INTELLECTUAL PROPERTY LAW GROUP LLP 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER CROW, ROBERT THOMAS ART UNIT PAPER NUMBER 1634 NOTIFICATION DATE DELIVERY MODE 06/11/2020 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): USPTOeAction@SeedIP.com pairlinkdktg@seedip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KALLE GÜNTHER, RALF WYRICH, and UWE OELMÜLLER ____________ Appeal 2019-006621 Application 14/423,062 Technology Center 1600 ____________ Before DONALD E. ADAMS, ULRIKE W. JENKS, and ELIZABETH A. LAVIER, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the Decision mailed March 20, 2020 (“Decision”) affirming the rejections under 35 U.S.C. § 103. We have jurisdiction over this Request under 35 U.S.C. § 6(b). ANALYSIS Appellant contends that “[b]ecause newly cited references were not included in the rejections in the [F]inal Office Action but relied on in the Decision on Appeal, the Decision on Appeal includes new grounds of rejection, rather than a mere affirmance of the Examiner’s rejections” (Req. Reh’g 2; see also id. at 3 (Appellant contends that “the Board cites (1) the PAXgene Blood RNA Kit Handbook, (2) US 7,270,953, (3) US 7,682,790, Appeal 2019-006621 Application 14/423,062 2 and (4) US 5,010,183”); see generally id. at 3–4). Appellant, therefore, “requests that new grounds of rejection be designated to afford Appellant an opportunity to respond to them” (id. at 2). Upon review of the record, we grant Appellant’s request, and designate the affirmance of each ground of rejection in the Decision a new ground of rejection. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–18, 20 103 Ryan, Weisburg 1–18, 20 19 103 Ryan, Weisburg, Fernando 19 21, 22 103 Ryan, Weisburg, Kappel 21, 22 1–14, 16–18, 21, 22 103 Ryan, Kappel 1–14, 16– 18, 21, 22 15, 20 103 Ryan, Kappel, Weisburg 15, 20 19 103 Ryan, Kappel, Fernando 19 Overall Outcome 1–22 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–18, 20 103 Ryan, Weisburg 1–18, 20 19 103 Ryan, Weisburg, Fernando 19 21, 22 103 Ryan, Weisburg, Kappel 21, 22 1–14, 103 Ryan, Kappel 1–14, Appeal 2019-006621 Application 14/423,062 3 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16–18, 21, 22 16–18, 21, 22 15, 20 103 Ryan, Kappel, Weisburg 15, 20 19 103 Ryan, Kappel, Fernando 19 Overall Outcome 1–22 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the 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). GRANTED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation