Berend Jan. Arends et al.

Patent Trials and Appeals Board

Dec 18, 2019

14359133 - (R) (P.T.A.B. Dec. 18, 2019)

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.
14/359,133 05/19/2014 Berend Jan Arends 039676.00048 4267
68543 7590 12/18/2019
Arent Fox LLP - Los Angeles
555 West Fifth Street
48th Floor
Los Angeles, CA 90013
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BEREND JAN ARENDS,
CHRISTIAAN MICHAEL BEINDORFF,
ALBERT JAN BEZEMER, and TEUNIS DE MAN
____________

Appeal 2018-007784
Application 14/359,133
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant1 filed a Request for Rehearing (“Request” or “Req.”)
under 37 C.F.R. § 41.52 seeking reconsideration of our Decision dated
September 17, 2019 (“Decision” or “Dec.”), in which we affirmed the
Examiner’s rejections of claims 1–3, 5–11, and 13.
We DENY the Request.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a).
Appeal 2018-007784
Application 14/359,133

2
ANALYSIS
In the Decision, we declined to consider the Appellant’s arguments
concerning the Examiner’s rejection of dependent claim 5 because the
Appellant’s arguments were raised for the first time in the Reply Brief.
Dec. 4. In the Rehearing Request, the Appellant does not contend that the
Reply arguments had been sufficiently raised in the Appeal Brief. See
Req. 2–3. Nor does the Appellant argue that the Appellant had “good cause”
for presenting new arguments in the Reply. See id.; see also 37 C.F.R.
§ 41.41(b)(2). Instead, the Appellant argues that the Board was obligated to
consider the Reply arguments because those arguments allegedly were
“responsive to an argument raised in the examiner’s answer,” as
contemplated by 37 C.F.R. § 41.41(b)(2). See Req. 2–3.
That argument is not persuasive. In the Examiner’s Answer, the
Examiner’s discussion of claim 5 was essentially identical to the Examiner’s
discussion of claim 5 in the Final Action. Compare Ans. 5–6, with Final
Act. 5–6. The Appellant does not contend otherwise. Although 37 C.F.R.
§ 41.41(b)(2) refers to “arguments raised in the examiner’s answer,” the
Federal Circuit has interpreted that as encompassing only “arguments raised
for the first time” in the answer:
Since the examiner’s answer is deemed to incorporate all
grounds in the Final Office Action, an applicant’s reply may not
respond to grounds or arguments raised in the examiner’s
answer if they were part of the Final Office Action and the
applicant did not address them in the initial appeal brief. If an
examiner’s answer includes arguments raised for the first time,
i.e., not in the Final Office Action, an applicant may address
those arguments in the reply. 37 C.F.R. §§ 41.39, 41.41.
Appeal 2018-007784
Application 14/359,133

3
In re Durance, 891 F.3d 991, 1001 (Fed. Cir. 2018) (emphasis added). That
holding is consistent with longstanding Board practice. See, e.g., In re
Borden, No. 2008-004312 (BPAI Jan. 7, 2010) (informative) (“The reply
brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.” (emphasis added)).
Accordingly, we maintain our determination that the Appellant’s
arguments addressing claim 5 for the first time in the Reply Brief were
untimely. See Dec. 5. We decline to consider those arguments because the
Examiner has not had an opportunity to consider them in the first instance.
CONCLUSION
The Decision has been reconsidered, but, for the reasons set forth
above, the request is DENIED with regard to modifying the result of the
Decision.
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–3, 6–11,
13
103(a) Barendse 1–3, 6–11, 13
5 103(a) Barendse, Münüklü 5
Overall
Outcome
1–3, 5–11, 13

Appeal 2018-007784
Application 14/359,133

4
Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–11, 13 103(a) Barendse 1–3, 6–11,
13

5 103(a) Barendse, Münüklü 5
Overall
Outcome
1–3, 5–11,
13

DENIED