90008751 (B.P.A.I. Jan. 4, 2012)

Ex Parte 6846477 et al

Board of Patent Appeals and InterferencesJan 4, 2012

90008751 (B.P.A.I. Jan. 4, 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. 90/008,751 06/29/2007 6846477 2036 23913 7590 01/04/2012 PFIZER INC Mary J Hosley 150 EAST 42ND STREET MS: 150/02/E112 NEW YORK, NY 10017-5612 EXAMINER PONNALURI, PADMASHRI ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/04/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PFIZER, INC. Appellant ____________ Appeal 2011-004052 Reexamination Control 90/008,751 Patent 6,846,477 B2 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, SALLY G. LANE and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING Patent Owner, who is also the Appellant, requests rehearing pursuant to 37 C.F.R. § 41.52 (“Req. Reh’g”) in order that the Board modify its decision of July 15, 2011 (“Dec.”), to include a statement specifying the amendment of the claims on appeal (particularly Claim 1) in order to Appeal 2011-004052 Reexamination Control 90/008,751 Patent 6,846,477 B2 2 overcome a specific rejection so that Patentee may amend in conformity therewith. Patent Owner’s primary argument is not that the Board erred in its Decision, but that for procedural and other reasons, an amendment to the claims which would have distinguished over the prior art Bhogal publication was not entered into the record during the proceeding before the Examiner. We have already addressed this issue in our Decision, but declined to exercise our discretion to give the Patent Owner the right to amend the claims in conformity with the proposed amendment. As we discussed, Patent Owner had ample opportunity to amend the claims during the reexamination proceeding before the Examiner to distinguish the very same prior art that the Patent Owner now seeks to avoid. The proposed amendment was not timely presented to the Examiner1 nor in the briefs, but was proposed at the oral hearing. As such, we consider, it a new argument. New arguments at oral hearings are only permitted under special circumstances. 37 C.F.R. § 41.47(e)(1) & (2). Patent Owner has not established that those circumstances are applicable here. 1 “Indeed, it came to be . . . that Patentee was finally permitted to have entered of record an amendment of Claim 1 to recite ‘when said animal is either seropositive or seronegative for M. hyopneumoniae’ but the additional concept ‘and wherein said single dose is effective in the treatment of both seropositive and seronegative animals’ was left behind in an attempt to just get any changes at all entered of record.” (Req. Reh’g 3.) Patent Owner states that “language substantially identical to the new clause . . . was, in fact previously proposed by Patentee by way of its amendment” of January 8, 2009 to claim 2, but this amendment was not entered into the claims and Patent Owner did not petition for its entry nor present it again when Patent Owner had the opportunity. Appeal 2011-004052 Reexamination Control 90/008,751 Patent 6,846,477 B2 3 If Patent Owner believed that the Examiner did not follow proper procedure in denying admission of certain claim amendments during reexamination under 37 C.F.R. §§ 1.111-1.113 and 1.550, Patent Owner’s relief was in the way of a petition to direct the Examiner to enter the claim amendments. The Board does not have supervisory control over the Examiner, but rather the Board’s jurisdiction is limited to the review of adverse decisions of examiners to reject claims. 35 U.S.C. §§ 6(b) and 134(b). Thus, the events discussed in the Request for Rehearing concerning the Examiner’s actions (Req. Reh’g 2-4) are not within the Board’s jurisdiction to address. Patent Owner has filed a Request to Reopen Prosecution under 37 C.F.R. § 1.198 (Req. Reh’g 4), which is independent of our decision to deny this rehearing. REHEARING DENIED kmf PFIZER INC Mary J. Hosley 150 East 42nd Street MS: 150/02/E112 New York, NY 10017-5612