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Patent Trials and Appeals Board

Jun 11, 2020

2019006621 (P.T.A.B. Jun. 11, 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.
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)