Ex Parte Parkes et alDownload PDFPatent Trial and Appeal BoardNov 27, 201311423108 (P.T.A.B. Nov. 27, 2013) Copy Citation 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. 11/423,108 06/08/2006 Nigel Parkes 010770.00062 5242 22908 7590 04/30/2014 BANNER & WITCOFF, LTD. TEN SOUTH WACKER DRIVE SUITE 3000 CHICAGO, IL 60606 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 04/30/2014 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 NIGEL PARKES, RUSSELL BOXALL, PHILIP EDWARD HARRIS and RICHARD JAMES BLITON __________ Appeal 2012-009696 Application 11/423,108 Technology Center 1700 ____________ Before CHUNG K. PAK, DONNA M. PRAISS, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-009696 Application 11/423,108 2 STATEMENT OF THE CASE This is in response to a Request for Rehearing (“Request”), dated January 29, 2014, of our Decision, mailed November 29, 2013 (“Decision”), wherein we affirmed the Examiner’s § 103 rejection of all appealed claims. Appellants request reconsideration of the affirmance of the rejections of claims 1-12, 24-26, and 28-30 under 35 U.S.C. § 103(a). Request 1. Appellants contend that the Decision contains an undesignated new ground of rejection. Id. Appellants further contend that the Board misapprehended the references and the conclusions to be drawn as to the Examples of Cox.1 Id. We have reconsidered our Decision of November 29, 2013. We have thoroughly reviewed the arguments set forth by Appellants in the Request. In light of Appellants’ request, we will denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b), as our decision relies on additional findings of fact that are materially different than those relied upon by Examiner. Accordingly, we grant the Appellants’ Request for Rehearing to the extent that we denominate our Decision as involving a new ground of rejection. We do not make any other change to the Decision. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 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.” 1 US 6,713,411 B2, issued March 30, 2004. Appeal 2012-009696 Application 11/423,108 3 37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceedings will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceedings be reheard under § 41.52 by the Board upon the same record. . . . GRANTED 37 C.F.R. § 41.50(b) tc Copy with citationCopy as parenthetical citation