Ex Parte Maccormack et al

Board of Patent Appeals and Interferences

Feb 4, 2009

09239907 (B.P.A.I. Feb. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW MacCORMACK, HOWARD GURNEY, WILLIAM
ROBBINS, and FABRIZIO ROVATI
____________________

Appeal 2008-3215
Application 09/239,907
Technology Center 24001
____________________

Decided2: February 4, 2009

____________________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The Examiner’s Answer issued from Group 2600 but the Examiner is now
in Group 2400.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. §1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3215
Application 09/239,907

Appellants request a rehearing (hereinafter “Reh’g”) pursuant to
37 C.F.R. § 41.52 of a decision affirming the Examiner’s rejections of
claims 1, 3-10, 21-42, 45 and 46, and reversing the Examiner’s rejection of
claims 11 and 13-20 by the Board of Patent Appeals and Interferences,
(hereinafter “Dec.”).3
As Appellants correctly note (Reh’g 1-2), we did not sustain the
Examiner’s anticipatory rejection under 35 U.S.C. § 102(e) of claims 39-41
based on Dokic (Dec., 10-13), even though our “Decision” and
“Conclusion” sections erroneously indicated otherwise. Accordingly, as
Appellants also note, because claim 42 depends from claim 39, we also
should not have sustained the Examiner’s obviousness rejection of claim 42
under 35 U.S.C. § 103 (a), based on Dokic and Bestler. (See Dec. 18).4
Consequently, our “Conclusion” section also should have indicated
that we did not sustain the Examiner’s rejections of claims 39-42, and
similarly, our “Decision” section also should have indicated that we reversed
the Examiner’s decision with respect to those claims (in addition to our
indication that we reversed the Examiner’s decision rejecting claims 11, 13
and 20), as Appellants correctly note. (Reh’g. 1, 3). Therefore, Appellants’
request that we reconsider our decision is hereby granted, and our decision is

3 Mailed October 31, 2008.
4 As stated in our “Analysis” section: “Claim 42 depends from claim 39.
The Examiner does not contend . . . that the features of claim 39 that are
missing from Dokic, as discussed above, are taught, suggested or motivated
by Bestler.” (Dec. 18, quoting Reply Br. 5).
2
Appeal 2008-3215
Application 09/239,907

modified to reflect the above discussed corrections. Accordingly, our
indication of the affirmance of claims 39-42 is withdrawn.

REHEARING
GRANTED

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