Ex Parte Dzau et al

Patent Trial and Appeal Board

Nov 6, 2012

10850994 (P.T.A.B. Nov. 6, 2012)

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.
10/850,994 05/20/2004 Victor J. Dzau ANV-0021C5 2115
7590 11/07/2012
J. MICHAEL SCHIFF
4320 VON KARMAN AVENUE
NEWPORT BEACH, CA 92660
EXAMINER
WOITACH, JOSEPH T
ART UNIT PAPER NUMBER
1633
MAIL DATE DELIVERY MODE
11/07/2012 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 VICTOR J. DZAU, GARY H. GIBBONS,
and RYUICHI MORISHITA
____________

Appeal 2011-005465
Application 10/850,994
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration (rehearing) of the Board‟s opinion
entered July 23, 2012 (Opinion) affirming the provisional rejection of claims
13 and 14 under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over the claims of Morishita II,
1
which is the
only rejection remaining in this Appeal (Req. Rh‟g 1; Cf. Opinion 2). We
have jurisdiction under 35 U.S.C. § 6(b).

1
Morishita et al., US 2004/0162251 A1, published August 19, 2004.
Appeal 2011-005465
Application 10/850,994

2
The only rejection pending in this Application is a provisional
obviousness-type double patenting rejection over Morishita II.
Appellants contend that Morishita II is currently pending and on
Appeal at the Board (Req. Rh‟g 2).
For the foregoing reasons, we grant Appellants‟ request and “reverse
the [provisional] obviousness-type double patenting rejection” over
Morishita II (Req. Rh‟g 5; Cf. Manual of Patent Examining Procedure
§ 804(I)(B) (“The „provisional‟ double patenting rejection should continue
to be made by the examiner in each application as long as there are
conflicting claims in more than one application unless that „provisional‟
double patenting rejection is the only rejection remaining in at least one of
the applications”) (emphasis added)).
Appellants‟ claims are currently free of rejection.

REHEARING GRANTED; REVERSED

alw