Ex Parte 7043543 et al

Patent Trial and Appeal Board

Sep 28, 2018

95001485 (P.T.A.B. Sep. 28, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,485 11/12/2010 7043543 57058.0148 8636
26582 7590 12/17/2018
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/17/2018 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
____________

AMERICAN POWER CONVERSION CORPORATION,
Requester,

v.

SERVER TECHNOLOGY, INC.,
Patent Owner.
____________

Appeal 2017-004953
Inter partes Reexamination Control 95/001,485
United States Patent 7,043,543 B2
Technology Center 3900
___________

Before RAE LYNN P. GUEST, Administrative Patent Judge.

ORDER
BOARD RULE 41.77(f)

In a decision on appeal entered September 29, 2015, the Board sustained the
Examiner’s rejections of claims 1–26, 29–31, 33, 34, 37, 39–43, 46–48, and 50;
reversed the Examiner’s refusal to adopt the proposed rejections of claims 28, 32,
35, 36, 38, 44, 45, 49, and 51–62 and set forth new grounds of rejections in
accordance with 37 C.F.R. § 41.77(b). On October 29, 2015, Patent Owner filed a
request to reopen prosecution as to the claims newly rejected pursuant to 37 C.F.R.
Appeal 2017-004953
Inter partes Reexamination Control 95/001,485
United States Patent 7,043,543 B2

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§ 41.77(b)(1). In addition, Patent Owner filed a statutory disclaimer in Patent
7,043,543 B2 on May 18, 2018, which disclaimed patent claims 1–23.
A new decision on appeal was entered by the Board on September 28, 2018
(hereinafter “Decision”). The Decision agreed with the Examiner that the
amendment to claim 35 overcame the new ground of rejection and further
determined that Patent Owner did not overcome the remaining new grounds of
rejection. Finally, the Decision entered additional new grounds of rejection of
claims 35, 51, 52, and 54–62 in accordance with 37 C.F.R. § 41.77(b).1
This proceeding has been referred to the Board for a finalization of the
Board’s Decision. In response to the new grounds of rejection set forth in the
September 28, 2018, Decision, the Patent Owner has not filed either a request for
reopening of prosecution pursuant to 37 C.F.R. § 41.77(b)(1), or a request for a
rehearing based upon the same record pursuant to 37 C.F.R. § 41.77(b)(2). As a
consequence, the appeal proceeding as to claims 35, 51, 52, and 54–62 is
terminated. See 37 C.F.R. § 41.77(b). Additionally, Patent Owner has not filed a
request for rehearing under 37 C.F.R. § 41.79(a). The Board’s Decision of
September 28, 2018, incorporating the Decision of September 29, 2015, is now
final and appealable to the United States Court of Appeals for the Federal Circuit,
as the parties’ rights to request rehearing are exhausted. See 37 C.F.R. § 41.81,
which refers to 37 C.F.R. § 1.983.
ORDER
Appeal proceedings as to claims 35, 51, 52, and 54–62 are terminated.

1 See Decision 4, 27–36.
Appeal 2017-004953
Inter partes Reexamination Control 95/001,485
United States Patent 7,043,543 B2

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The Decision affirming the rejections of claims 24–26, 28–34, 36––50, and
53, is final and appealable.
This paper serves as the new decision under 37 C.F.R. § 41.77(f), to the
extent that the rule calls for a decision. Any requirement beyond that of the rule is
hereby waived.

Counsel for Patent Owner:
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY UT 84147

Counsel for Third Party Requester:
JENNER & BLOCK LLP
353 N. Clark Street
Chicago, Illinois 60654