95000377 (B.P.A.I. Jul. 23, 2012)

Ex Parte 7223361 et al

Board of Patent Appeals and InterferencesJul 23, 2012

95000377 (B.P.A.I. Jul. 23, 2012)

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. 95/000,377 09/15/2008 7223361 3289-011 8140 27752 7590 07/23/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 07/23/2012 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 ____________ Reckitt Benckiser Requester v. The Procter & Gamble Co. Patent Owner and Appellant ____________ Appeal 2011-012650 Reexamination Control 95/000,377 Patent 7,223,361 B2 Technology Center 3900 ____________ Before JEFFREY B. ROBERTSON, ROBERT A. CLARKE, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-012650 Reexamination Control 95/000,377 Patent 7,223,361 B2 2 Third-Party Requester Reckitt Benckiser (hereinafter “Requester”) requests rehearing under 37 C.F.R. § 41.79 of our decision mailed March 28, 2012 (hereinafter “Decision”) in the appeal of the reexamination of United States Patent 7,223,361 B2 (hereinafter the “‘361 Patent”) in which we reversed the Examiner’s obviousness rejection of claim 2 over Laudamiel- Pellet US 2002/0066798 A1 (“Pellet ‘798”). (Request for Rehearing filed April 30, 2012, hereinafter “Request,” at 1.) Patent Owner Procter & Gamble Co. filed comments on Requester’s Request for Rehearing. (Patent Owner Comments on Request for Rehearing filed May 30, 2012.) Requester contends that in reversing the Examiner’s rejection of claim 2, we effectively entered a new ground of rejection, and overlooked designating our reversal of the Examiner’s decision to make a rejection as a new ground of rejection. (Request, 1-2; see Decision, 13-14, 16-17.) Requester additionally cites to In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011) and In re Kumar, 418 F.3d 1361, 1367 (Fed. Cir. 2005) and argues that our reversal should be designated as a new ground of rejection to allow Requester an opportunity to respond to our decision by reopening prosecution. (Request 2-4.) We do not agree with Requester’s position that reversing an Examiner’s rejection in an inter partes reexamination constitutes a new ground of rejection, depending on the reasoning for reversal. 37 C.F.R. § 41.77(a) states that the Board may “affirm or reverse each decision of the examiner on all issues raised.” Regarding new grounds of rejection, 37 C.F.R. § 41.77(b) states that “[s]hould the Board reverse the examiner’s determination not to make a rejection proposed by a requester, the Board Appeal 2011-012650 Reexamination Control 95/000,377 Patent 7,223,361 B2 3 shall set forth in the opinion in support of its decision a new ground of rejection….” (Emphasis added.) 37 C.F.R. § 41.77(b) also states that “should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim.” (Emphasis added.) Thus, the situations where a board decision would designate a new ground of rejection include: 1) reversing the Examiner’s determination not to adopt a ground of rejection proposed by Requester; and 2) instituting a new ground for rejecting any pending claim. We have not been directed to a provision in the rules that would indicate that a decision to reverse an Examiner’s rejection of appealed claims may be designated as a new ground of rejection. Similarly, as discussed by Requester, Leithem and Kumar both involved situations where the claims had been rejected over prior art. (See Request 2-4.) Thus, we do not agree that we overlooked any points in our opinion reflecting our decision reversing the Examiner’s rejection of claim 2. Therefore, we decline to make any changes in the Decision mailed March 28, 2012. Accordingly, the Request for Rehearing is denied. DENIED cu Appeal 2011-012650 Reexamination Control 95/000,377 Patent 7,223,361 B2 4 PATENT OWNER: THE PROCTER & GAMBLE COMPANY Global Legal Department – IP Sycamore Building – 4th Floor 299 East Sixth Street Cincinnati, OH 45202 THIRD-PARTY REQUESTER: TRASK BRITT P.O. B0x 2550 Salt Lake City, UT 84110