Ex Parte 8023290 et al

Patent Trial and Appeal Board

Feb 19, 2019

95001861 (P.T.A.B. Feb. 19, 2019)

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.
95/001,861 12/21/2011 8023290 X43641 7833
7055 7590 02/20/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2019 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
____________

VICOR CORPORATION,
Requester,

v.

SYNQOR, INC.,
Patent Owner.
____________

Appeal 2015-004509
Reexamination Control 95/001,861
Patent 8,023,290 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON REMAND
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The Federal Circuit remanded this matter to us for further proceedings
on August 30, 2017. Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1326 (Fed.
Cir. 2017).
In an earlier Decision, mailed May 2, 2016 (“Decision”), we affirmed
the Examiner’s non-adoption of the following rejections:
I. Claims 1–4, 11, and 12 under 35 U.S.C. § 103(a) over
Steigerwald ’090,1 Cobos,2 and Pressman3 (Rejection I);
II. Claims 5–10 and 13–15 under 35 U.S.C. § 103(a) over
Steigerwald ’090, Cobos, Pressman, and APA4 (Rejection II);
III. Claims 1–4, 11, and 12 under 35 U.S.C. § 103(a) over JP ’446,5
Steigerwald ’539,6 and Kassakian7 (Rejection III);

1 U.S. Patent No. 5,377,090, issued December 27, 1994 (“Steigerwald
’090”).
2 J.A. Cobos & J. Uceda, “Low Output Voltage DC/DC Conversion,” 20th
International Conference on Industrial Electronics, Control, and
Instrumentation 1676–1681 (1994) (“Cobos”).
3 Abraham I. Pressman, “Switching and Linear Power Supply, Power
Converter Design” (1977) (“Pressman”).
4 Admitted Prior Art in the form of the transcript of trial testimony from the
trial in the case of SynQor, Inc. v. Arlesyn Technologies, et al., Case No.
2:07-CV-479, 12/14/2010, AM session (“APA”).
5 Japanese Patent Application Publication No. H05-64446, pub. March 12,
1993 (“JP ’446”).
6 U.S. Patent No. 5,274, 539, issued December 28, 1993 (“Steigerwald
’539”).
7 John G. Kassakian & Martin F. Schlecht, “High-Frequency High-Density
Converters for Distributed Power Supply Systems,” Proc. Of the IEEE,
vol. 76, no. 4, 362–376 (Apr. 1988) (“Kassakian”).
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IV. Claims 5–10 and 13–15 under 35 U.S.C. § 103(a) over JP ’446,
Steigerwald ’539, Kassakian, and Cruz8 (Rejection IV); and
V. Claims 1, 2, 4, 11, and 12 under 35 U.S.C. § 103(a) over
Steigerwald ’090 (incorporating Steigerwald ’539) and
Pressman (“Rejection V”); and
VI. Claims 3, 5–10, and 13–15 under 35 U.S.C. § 103(a) over
Steigerwald ’090 (incorporating Steigerwald ’539), Pressman,
and Cruz (“Rejection VI”).
The Federal Circuit affirmed our decision “not to adopt proposed
rejections I–II” but vacated and remanded our decision on proposed
rejections III–VI (affirming the Examiner’s non-adoption of proposed
rejections of claims 1–15) for further proceedings to address various issues,
including “analy[zing] whether there is a nexus between the secondary
considerations evidence and the switching regulators at issue . . . for
proposed rejections V–VI” (id. at 1324). See id. at 1322–24.
In a reexamination proceeding (Control No. 95/001,702) for related
U.S. Patent No. 7,072,190 (“the ’190 patent”), the Federal Circuit held that
“Steigerwald ’090 incorporates by reference . . . teachings of Steigerwald
’539 that relate to its capacitance-multiplying converter 20,” and, therefore,
“the combined reference teaches a single embodiment that anticipates all
elements of representative claim 20 [of the ’190 patent].” Vicor Corp. v.

8 Enrique de la Cruz et al., “Analysis of Suitable PWM Topologies to Meet
Very High Efficiency Requirements for On Board DC/DC Converters in
Future Telecom Systems,” 15th Annual Telecommunications Energy
Conference 207–214 (1993) (“Cruz”).
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SynQor, Inc., 603 F. App’x 969, 974–975 (Fed. Cir. 2015). Claim 20 of the
’190 patent, held to be unpatentable by the Federal Circuit, reads as follows:
20. A power converter system comprising:
a DC power source;
a non-regulating isolation stage comprising:
a primary transformer winding circuit having at
least one primary winding connected to the
source; and
a secondary transformer winding circuit having at
least one secondary winding coupled to the at
least one primary winding and having plural
controlled rectifiers, each having a parallel
uncontrolled rectifier and each connected to a
secondary winding, each controlled rectifier
being turned on and off in synchronization with
the voltage waveform across a primary winding
to provide an output; and
a plurality of non-isolating regulation stages, each
receiving the output of the isolation stage and regulating a
regulation stage output.

Claim 1 of the ’290 patent reads as follows:
1. A DC-DC power converter system providing
plural regulated DC outputs, each having a regulated voltage,
comprising:
a DC input;
a non-regulating isolation converter comprising:
a primary transformer winding circuit having at
least one primary winding that receives power
from the DC input; and
a secondary transformer winding circuit having at
least one secondary winding coupled to the at
least one primary winding and having plural
controlled rectifiers, each having a parallel
uncontrolled rectifier and each in circuit with a
secondary winding, each controlled rectifier
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being turned on and off in synchronization with
the voltage waveform of the at least one
primary winding to provide a non-regulated,
isolated DC output; and
plural non-isolating switching regulators, each receiving
power from the non-regulated, isolated DC output of the non-
regulating isolating converter and each providing one of the
regulated DC outputs having a regulated voltage.

Rejections III-IV
In accordance with instructions from the Federal Circuit, we first re-
evaluate Rejections III–IV. As noted above, the Federal Circuit has held
that Steigerwald ’090 incorporates by reference Steigerwald ’539 and the
combined (single) reference anticipates claim 20 of the related ’190 patent.
As we previously stated,
The Examiner found that JP ‘446 described “an efficient
and low noise power supply system” including a transformer
connected to a DC power supply 1. Req. 38. The transformer
was found to include a primary winding and a secondary
winding, and a rectifier circuit including a plurality of rectifying
diodes connected to the secondary winding of the transformer.
Id. The Examiner further found that the output of the rectifier
circuit 7 is connected to respective DC/DC converters which
are non-isolating regulators. Id. at 39.

Steigerwald ‘539 was found to describe that synchronous
rectifiers driven by the voltage waveform on the primary
winding of the transformer may be substituted for diode
rectifiers in a non-regulating, isolating power converters. Id.
40. The Examiner then concluded it would have been obvious
to substitute the synchronous rectifiers for the diodes in JP
‘446.

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Kassakian was found to describe that down-converting
non-isolating switching regulators were well known in the art.
Id. 41. The Examiner then concluded it would have been
obvious to implement the non-isolating regulators of JP ‘446 as
the non-isolating regulators of Kassakian. Id.

During prosecution in this proceeding, the Patent Owner
urged that JP ‘446 cannot be combined with Steigerwald ‘539.
PO Resp. 25. The reason urged was that the modification to JP
‘446 would cause current to flow in the reverse direction for a
period of the duty cycle. Id. More specifically, Patent Owner
urged that Steigerwald’s controlled rectifiers are driven by
waveforms derived from a voltage on the primary side of the
power converter. Id. (citing Steigerwald ‘539, 4:58–55:42).
Patent Owner urged that this drive scheme, if used for
controlled rectifiers replacing the diode rectifiers in JP ‘446
would cause current to flow in the reverse direction, or fail to
operate correctly. Id. at 25–26.

Decision 13–14.
As indicated above, Patent Owner argues that JP ’446 discloses “a
diode rectifier that does not allow current to flow in the reverse direction . . .
[and] Steigerwald ’539 teaches controlled rectifiers . . . [that] would cause
current to flow in the reverse direction.” Synqor, Inc.’s Response to Non-
Final Office Action, dated May 2, 2012 (“PO Resp.”), 25. In other words,
Patent Owner argues that it would not have been obvious to one of ordinary
skill in the art to have combined the teachings of JP ’446 and Steigerwald
’539 because modifying JP ’466’s “diode rectifiers” with Steigerwald ’539’s
“controlled rectifiers” would render the combination inoperable. We are not
persuaded by Patent Owner’s argument.
First, one of skill in the art would have understood that a “rectifier”
allows current flow in only one direction. As Requester states, “MOSFETs
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configured as synchronous rectifiers prevent reverse current flow” and that
“by definition, a synchronous rectifier (or any other rectifier) allows current
to flow in essentially only one direction.” Third Party Requester Comments
Per 35 U.S.C. §§ 314(b)(2) and 37 C.F.R. 1.951 (b), filed May 23, 2012
(“3PR Comments”), 36–37. For at least this reason, we are not persuaded by
Patent Owner that replacing the rectifier of JP ’446 (that, by definition,
allows current flow in only one direction) with another rectifier of
Steigerwald ’539 (that, by definition, also allows current flow in only one
direction) would somehow result in the rectifier of Steigerwald ’539
permitting current flow in the other direction, contrary to the known
function of a “rectifier” of allowing current flow in only one direction.
Second, as previously discussed, the Federal Circuit has determined
that the combination reference of Steigerwald ’539 (incorporated by
reference by Steigerwald ’090) discloses an embodiment in which diode
rectifiers are replaced with controlled rectifiers. See Vicor Corp.,
603 F. App’x at 974–975. Patent Owner does not explain persuasively how
the use of controlled rectifiers in the (single) combined reference of
Steigerwald ’090 and Steigerwald ’539 would somehow conduct current in
one direction (as expected) but that the use of controlled rectifiers in the
combination of JP ’446 and Steigerwald ’539 (incorporated by Steigerwald
’090) would somehow result in current flow in the opposite result (i.e.,
current conducted in the reverse direction).
Patent Owner argues that it would not have been obvious to combine
Steigerwald ’539 with JP ’446 because “evidence of secondary
considerations has a legally sufficient nexus to both the infringing
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Unregulated Bus Converters and the infringing Unregulated IBA systems.”
PO Resp. 30; see also PO Resp. 31–33. Patent Owner’s expert (Martin F.
Schlecht, Sc.D.) testifies that “[u]nregulated IBA” experienced “commercial
success,” that “unregulated bus converters correspond to the ‘non-regulating
isolation stage’ in the asserted claims,” that there was testimony of “sales of
millions of unregulated bus converters,” that “people in the industry were
skeptical” of “IBA power supply systems,” that there was “widespread
adoption of the claimed [IBA] architecture in the industry,” and that the IBA
technology “was praised as an advance” by the industry. Declaration of
Martin F. Schlecht, Sc.D. Per Rule 1.132, filed June 5, 2009 (“Schlecht
Decl.” or “Schlecht Declaration”) ¶¶ 59, 61, 63, 109, 112, 114. In other
words, Patent Owner argues that various objective indicia of non-
obviousness, including, for example, commercial success, skepticism,
widespread adoption, and praise in the industry, were due to the claimed
feature of “IBA” technology, which “correspond[s] to the ‘non-regulating
isolation stage’ in the asserted claims.” Schlecht Decl. ¶ 61.
However, as previously indicated, the Federal Circuit has held that
Steigerwald ’539 (incorporated by reference into Steigerwald ’090) discloses
(and anticipates) the claimed “IBA” technology, which Patent Owner relies
on as a “nexus” between the claimed invention and each of the alleged
objective indicia of non-obviousness. It also would not make logical sense
to conclude that an “IBA” system disclosed by Steigerwald ’090/’539 was
somehow not disclosed by Steigerwald ’090/’539 because Patent Owner’s
subsequent “IBA” system allegedly enjoyed commercial success, praise, or
widespread use in the industry. In any event, all evidence of secondary
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considerations stem from what was known in the prior art (i.e., Steigerwald
’090/’539) so that there can be no nexus. See Tokai Corp. v. Easton Enters.,
Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
Therefore, we reverse the Examiner’s non-adoption of the rejection of
claims 1–4, 11, and 12 under 35 U.S.C. § 103(a) over JP ’446, Steigerwald
’539 (incorporated by reference by Steigerwald ’090), and Kassakian
(Rejection III) and claims 5–10 and 13–15 under 35 U.S.C. § 103(a) over JP
’446, Steigerwald ’539 (incorporated by reference by Steigerwald ’090),
Kassakian, and Cruz (Rejection IV).

Rejections V-VI
In further accordance with instructions from the Federal Circuit, we
proceed to re-evaluate the Examiner’s non-adoption of the rejection of
claims 1, 2, 4, 11, and 12 under 35 U.S.C. § 103(a) over Steigerwald ’090
(incorporating Steigerwald ’539) and Pressman (“Rejection V”) and claims
3, 5–10, and 13–15 under 35 U.S.C. § 103(a) over Steigerwald ’090
(incorporating Steigerwald ’539), Pressman, and Cruz (“Rejection VI”). As
we previously stated,
The Examiner then withdrew the rejections involving the
combination of Steigerwald and Pressman. RAN 11.

On appeal, Requester urges that the Examiner erred in
withdrawing the rejections because inductors in the output path
would not have prevented the combination of Steigerwald with
Pressman. App. Br. 38. The Appellant relies upon the testimony
of Dr. Steigerwald that one of ordinary skill in the art would
have understood that the non-pulsed voltages in Steigerwald
’090 can be implemented with or without inductors in the
current path. App. Br. 39–40.
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Patent Owner disagrees, observing that including
inductors in the current path would frustrate the principal
purpose of Steigerwald. Patent Owner also challenges
Dr. Steigerwald’s memory and lack of experience building a
converter.

Decision 20 (citation omitted).
As indicated above, Patent Owner argues that Steigerwald ’090/’539
and Pressman are “technical[ly] incompatib[le]” because “inductors in the
conduction path in Steigerwald ’090 . . . would impede current pulses [and
therefore frustrate] the basic purpose of Steigerwald ’090” and that
Requester’s reliance on “the Steigerwald Deposition” to demonstrate that
“an output path of a non-pulsed voltage in Steigerwald ’090 can be
implemented with or without inductors in the output path” is presumably
incorrect because of “[t]he suspect nature of Dr. Steigerwald’s memory and
his lack of first-hand knowledge.” Respondent Brief Under 37 C.F.R.
§ 41.68, filed April 14, 2014 (“PO Resp. Br.”), 8. Upon reconsideration
pursuant to instructions from the Federal Circuit, we are not persuaded by
Patent Owner’s argument.
Patent Owner argues that “inductors in the conduction path in
Steigerwald ’090” would supposedly “frustrat[e] the basic purpose of
Steigerwald ’090” but provides insufficient evidence that “inductors” in the
“conduction path in Steigerwald ’090” would, in fact, “frustrate”
Steigerwald ’090 (which incorporates by reference Steigerwald ’539).
Patent Owner states that Requester’s expert Dr. Steigerwald testifies that “an
output path . . . in Steigerwald ’090 can be implemented with or without
inductors in the output path.” PO Resp. Br. 8. Patent Owner does not
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explain sufficiently how including “inductors” in a “conduction path” in a
system that “can be implemented with or without inductors in the output
path” would somehow “frustrate the basic purpose.” Id. One of skill in the
art would have understood that including “inductors” in a “conduction path”
of a system that can be implemented with such “inductors” in the
“conduction path” (or not) would not frustrate the basic purpose of the
system at least because the system would have been known to operate with
or without the inductors.
Patent Owner argues that Dr. Steigerwald’s testimony is incorrect
because of an alleged “suspect nature of Dr. Steigerwald’s memory and his
lack of first-hand knowledge.” PO Resp. Br. 8. We are not persuaded by
Patent Owner’s argument of the supposed unreliability of Dr. Steigerwald’s
testimony at least because of insufficient evidence on the record of specific
problems with Dr. Steigerwald’s “memory” or “first-hand knowledge” with
respect to the presence or absence of “inductors” in a “conduction path” of
Dr. Steigerwald’s invention. For example, the noted passages of Dr.
Steigerwald’s deposition (Deposition of Robert L. Steigerwald (October 28,
2013) (“Steigerwald Deposition”)) indicate (1) his memory was “vague”
related to what he “did . . . as opposed to his co-authors” related to the ’539
and ’090 patents (Steigerwald Deposition 121, noted in PO Resp. Br. 6) and
(2) he never built the circuit described in the ’090 patent (Steigerwald
Deposition 190, noted in PO Resp. Br. 6) but not that he has no knowledge
related to inductors in a conduction path.
Patent Owner argues that the switching regulators of Pressman would
have included inductance and that claim 1 of Steigerwald ’090/’539 recites
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one embodiment of a power system that does not include “an inductor in its
conduction path . . . in which limitation (1), (d), (e), (h), (j), and (k) each
specifically recites a ‘path lacking inductors’” (PO Resp. Br. 8). However,
Patent Owner does not sufficiently demonstrate that Steigerwald ’090/’539
also discloses that the presence of inductance in an output path would
somehow “frustrate” the system. In fact, claim 1 of Steigerwald ’539
(incorporated by reference into Steigerwald ’090) does not recite an absence
of inductors.
Also, in actuality, Steigerwald ’539 (incorporated by reference into
Steigerwald ’090) explicitly discloses that prior art power systems include
an “energy-storage capacitor Cout, having an equivalent series resistance
ESR and an equivalent series inductance ESL associated therewith.”
Steigerwald ’539 2:49–52. Hence, Steigerwald ’539 (incorporated by
reference into Steigerwald ’090) discloses the presence of “inductance” in
prior art systems and does not disclose the preclusion of all inductance in its
conduction path, as Patent Owner appears to contend.
Additionally, Steigerwald ’539 (incorporated by reference by
Steigerwald ’090) discloses an embodiment in which an output path includes
an “energy-storage capacitance” and “ESL [i.e., series inductance] of the
energy-storage capacitor Ce.” Steigerwald ’539 3:50, 61–62. Here again we
note that, contrary to Patent Owner’s argument, Steigerwald ’539 does not
disclose the absence of inductance or that the presence of any inductance
would have somehow “frustrated” the power system. On the contrary,
Steigerwald ’539 discloses the presence of inductance and does not disclose
frustrating the system based on the presence of the inductance.
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We also note that Pressman discloses a switching regulator that
operates at a frequency range such that “inductors . . . are small.” Pressman
289. Patent Owner does not demonstrate sufficiently that the “small”
inductor of Pressman is large enough to, in fact, “frustrate” the system of
Steigerwald ’090/’539 that itself includes inductance. Given the evidence,
one of skill in the art would have understood that the “small” inductor of
Pressman would have been sufficiently “small” to avoid any problems of
“frustration” in Steigerwald ’090/’539, especially because Steigerwald
’090/’539 explicitly discloses embodiments that includes the presence of
inductance without “frustration.”
Upon reconsideration of this issue based at least on the fact that (a)
Steigerwald ’539 (i) discloses the presence of inductance in the output path
that does not “frustrate” the system and (ii) does not recite in its claims a
limitation of the absence of inductance and (b) Dr. Steigerwald’s testimony
that the system may or may not include inductors in an output path, we
conclude that the “basic purpose” of the power system of Steigerwald
’090/’539 would not be “frustrated” by the presence of inductance in the
output path (even assuming that switching regulators of Pressman would
have somehow included inductance, as Patent Owner alleges). Thus, we
agree that it would have been obvious to one of ordinary skill in the art to
have combined a known DC power system using a known regulator
(Steigerwald ’090/’539) with Pressman’s teaching of a known switching
regulator (of Pressman), which is known to be used in known dc power
systems, to achieve the predicable and expected result of a known dc power
system performing its known function with a known switching regulator.
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The Federal Circuit further instructs us to provide “analysis of
whether there is a nexus between the secondary considerations evidence and
the switching regulators at issue . . . for proposed rejections V-VI.” Vicor
Corp., 869 F.3d at 1324. This issue was previously discussed above in
reference to Rejections III–IV. For example, as noted above, Patent Owner
argues that the “IBA” architecture, as recited in the disputed claims, is the
reason for each of the alleged objective indicia of non-obviousness – e.g.,
commercial success, praise in the industry, etc. However, as also explained
above, the Federal Circuit has held that the “IBA” architecture (i.e., the
alleged “nexus” between the claimed invention and the cited objective
indicia of non-obviousness) is anticipated by the combined (single)
Steigerwald ’090/’539 reference. It would not make logical sense to
conclude that an “IBA” system disclosed by Steigerwald ’090/’539 was
somehow not disclosed by Steigerwald ’090/’539 because Patent Owner’s
subsequent “IBA” system allegedly enjoyed commercial success, praise, or
widespread use in the industry. All evidence of secondary considerations
stem from what was known in the prior art (i.e., Steigerwald ’090/’539) so
that there can be no nexus. See Tokai Corp., 632 F.3d at 1369.
Therefore, we reverse the Examiner’s non-adoption of the rejection of
claims 1, 2, 4, 11, and 12 under 35 U.S.C. § 103(a) over Steigerwald ’090
(incorporating Steigerwald ’539) and Pressman (“Rejection V”) and claims
3, 5–10, and 13–15 under 35 U.S.C. § 103(a) over Steigerwald ’090
(incorporating Steigerwald ’539), Pressman, and Cruz (“Rejection VI”).

Rejections I-II
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The above discussion addresses all the claims on appeal and are
dispositive, rendering it unnecessary to reach the propriety of any remaining
contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999); In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
We reverse the Examiner’s non-adoption of the rejection of claims
1–4, 11, and 12 under 35 U.S.C. § 103(a) over JP ’446, Steigerwald ’539,
and Kassakian (Rejection III); claims 5–10 and 13–15 under 35 U.S.C.
§ 103(a) over JP ’446, Steigerwald ’539, Kassakian, and Cruz (Rejection
IV); claims 1, 2, 4, 11, and 12 under 35 U.S.C. § 103(a) over Steigerwald
’090 (incorporating Steigerwald ’539) and Pressman (Rejection V); and
claims 3, 5–10, and 13–15 under 35 U.S.C. § 103(a) over Steigerwald ’090
(incorporating Steigerwald ’539), Pressman, and Cruz (Rejection VI).
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section § 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owner, WITHIN ONE MONTH FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
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rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002, may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

REVERSED
37 C.F.R. § 41.77(b)

Patent Owner:

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON VA 20191

Third Party Requester:

SMITH BALUCH LLP
100 M STREET SE
SUITE 600
WASHINGTON, DC 20003