95001110 (B.P.A.I. Jan. 30, 2012)

Ex Parte 7424133 et al

Board of Patent Appeals and InterferencesJan 30, 2012

95001110 (B.P.A.I. Jan. 30, 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. 95/001,110 12/01/2008 7424133 GEOC:002RX 9399 30589 7590 01/30/2012 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 EXAMINER BROWNE, LYNNE HAMBLETON ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/30/2012 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 ____________ PICTOMETRY INTERNATIONAL CORPORATION Patent Owner, Appellant v. GEOSPAN CORPORATION Requester, Respondent ____ Appeal 2011-010700 Reexamination Control No. 95/001,110 Patent 7,424,133 B2 Technology Center 3900 ____________ Before ALLEN R. MacDONALD, SCOTT R. BOALICK, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed November 7, 2011, Requester requests a rehearing under 37 C.F.R. § 41.79 from the Decision on Appeal of the Board of Patent Appeals and Interferences (hereinafter “Decision”), dated October 7, 2011. In the Decision, we reversed the Examiner’s rejection of claims 17, 18, and 43 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Appeal 2011-010700 Application 95/001,110 Patent 7,424,133 2 Ciampa and Rattigan. We also determined that the Rattigan reference does not qualify as a prior art reference. Requester alleges that the Board erred by misapprehending or overlooking Requester’s argument “that Rattigan is 35 U.S.C. 102(b) prior art that cannot be overcome by the proffered declarations” (Req. for Reh’g 1). In the Right of Appeal Notice dated February 26, 2010, the Examiner stated that “the use of a declaration under section 132 is not proper and cannot be used to disqualify Rattigan as prior art” because the Rattigan reference “is authored by David Rattigan with no other co-authors” (RAN 6). Requester concurred with the Examiner by stating that “Third Party Requester agrees with the Examiner’s position on the attempts by Appellant to swear behind the Rattigan reference” (Respondent Br. 4). Requester provided no additional arguments in the Briefs with regard to this issue. As we discussed in the Decision, based on the stated findings and arguments presented by the Examiner and Requester, we disagreed that Patent Owner failed to demonstrate that Rattigan reference did not qualify as a prior art reference under 37 C.F.R. § 1.132 (Decision 5-8). Requester now argues for the first time in the Request for Rehearing that the Rattigan reference supposedly does not qualify as a prior art reference under the newly presented theory that “[t]he invention claimed . . . was not fully enabled by the provisional patent application on which Pictometry [the Patent Owner] relies to establish an earlier filing date” (Req. Appeal 2011-010700 Application 95/001,110 Patent 7,424,133 3 for Reh’g. 1). Likewise, Requester argues that “[t]here is absolutely no discussion in the provisional application of measuring selected areas” (Req. for Reh’g. 4). Requester did not raise the issue of priority in any of the briefs pursuant to 37 C.F.R. § 41.79(b)(1), nor does Requester raise the newly presented arguments in response to either a recent relevant decision by the Board or a Federal Court or a new ground of rejection in the Decision made pursuant to 37 C.F.R. § 41.77(b). 1,2 Additionally, Requester has not provided explanation as why the argument is now being made, but could not have been made earlier (i.e., good cause for omission). Since Requester has not established that the Board erred in determining that Rattigan qualifies as a prior art reference based on arguments previously relied upon in the briefs, we find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is DENIED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 1 “Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing” (37 C.F.R. 41.79(b)(1)) unless such new arguments are shown to be “based upon a recent relevant decision of either the Board or a Federal Court” (37 C.F.R. 41.79(b)(2)) or are “arguments responding to a new ground of rejection made pursuant to § 41.77(b)” (37 C.F.R. 41.79(b)(3)). 2 “The Board will not, as a general matter, unilaterally review those uncontested aspects of [Appellant’s] rejection.” Ex parte Frye, 94 U.S.P.Q. 2d 1072, 1075(BPAI Feb. 26, 2010). Appeal 2011-010700 Application 95/001,110 Patent 7,424,133 4 DENIED rvb Patent Owner DUNLAP CODDING, P.C. P.O. BOX 16370 OKLAHOMA CITY, OK 73113 Third Party Requester SCHWEGMAN, LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402