RAI STRATEGIC HOLDINGS, INC.

Patent Trials and Appeals Board

Dec 18, 2020

2019005089 (P.T.A.B. Dec. 18, 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.
15/042,868 02/12/2016 Michael F. Davis R60999 11550US.1
(1082.6)
1036
26158 7590 12/18/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
WILLETT, TARYN T
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL F. DAVIS, PERCY D. PHILLIPS,
JAMES WILLIAM ROGERS, LISA E. BROWN, and
JAMES DEMOPOLOUS
Appeal 2019-005089
Application 15/042,868
Technology Center 1700
Before MONTÉ T. SQUIRE, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

Appellant1 requests rehearing of our October 8, 2020 Decision
(“Op.”). Request for Rehearing filed November 25, 2020 (“Request”). In the
Decision, we affirmed the Examiner’s rejection of claims 21 and 22 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre–AIA), first paragraph as well as
various art-based rejections. Op. 1, 5, 6, 16.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as RAI Strategic
Holdings, Inc. Appeal Brief of February 27, 2019 (“Appeal Br.”), 1.
Appeal 2019-005089
Application 15/042,868

2
In a request for rehearing, an appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52. We review the points of the Decision contested by
Appellant and determine whether we erred in fact finding or applying the
law, and further determine whether any such error changes the outcome of
the Decision when viewing all the evidence and arguments anew in light of
the preponderance of the evidence standard. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument”).
In this case, the sole argument raised in the Request is our affirmance
of the rejection of claims 21 and 22 under 112(a) or 112, first paragraph.
Request 1; see Op. 6. Appellant argues that this rejection has been
withdrawn in the Examiner’s Advisory Action of November 29, 2018.
Request 2.
The record before us supports Appellant’s argument. See Advisory
Action of November 29, 2018 (“The arguments from Applicant, filed
October 16th, 2018 regarding the previously issued 112(a) rejection have
been considered and are found to be persuasive. Applicant's reply has
overcome the following rejection(s): 112(a) rejection of claims 21 and 22.”).
We accordingly reverse our earlier affirmance of the rejection of claims 21
and 22 under 112(a) or 112, first paragraph. The affirmance of all other
rejections in the Decision remains unchanged.
CONCLUSION
For the foregoing reasons, we grant Appellants’ Request for
Rehearing.
Appeal 2019-005089
Application 15/042,868

3
In summary:
DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
21, 22 112(a) Written description 21, 22

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21, 22 112(a) Written description 21, 22
1–5, 7, 8,
10–12
102(a)(2) Scott 1–5, 7, 8,
10–12

1, 6 102(a)(2) Kribs 1, 6
8, 12, 13,
16–19
102(a)(2) Levitz 8, 12, 13,
16–19

15, 21, 22 103(a) Levitz 15, 21, 22
21 103(a) Scott 21
Overall
Outcome
1–8, 10–13,
15–19, 21,
22

GRANTED