Ex Parte Agapi et al

Board of Patent Appeals and Interferences

Nov 19, 2010

10744254 (B.P.A.I. Nov. 19, 2010)

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.
10/744,254 12/22/2003 Ciprian Agapi BOC920030053US1 (023) 1918
46322 7590 11/22/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
AJIBADE AKONAI, OLUMIDE
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
11/22/2010 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 CIPRIAN AGAPI, VANESSA V. MICHELINI,
and WALLACE J. SADOWSKI
_____________

Appeal 2009-005273
Application 10/744,254
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR.,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-005273
Application 10/744,254

2
Appellants have requested a rehearing of our decision dated August
23, 2010, wherein we affirmed the anticipation rejection of claims 2-7, 10,
and 12 under 35 U.S.C. § 102(e) and the obviousness rejection of claim 9
under 35 U.S.C. § 103(a).
Appellants argue (Request 4) that we did not limit our decision to case
law, findings, and conclusions cited by the Examiner. The additional
findings of fact were presented to support the Examiner’s analysis (Ans. 8),
which relied on Appellants’ Specification to interpret the claimed meaning
of the word “continuously.” We agree with Appellants that we relied
(Opinion 4-9) on additional portions of the Clark reference (cols. 5, 8) in
interpreting claim 7. Accordingly, Appellants have not had a fair
opportunity to argue the issues with respect to our claim interpretation nor
has the Examiner had the opportunity to consider the claimed invention as
interpreted by us. Thus, we agree with Appellants that simple fairness
requires that we allow Appellants the opportunity to prosecute before the
Examiner the invention as interpreted by us.
Therefore we grant Appellants’ request for rehearing, and we hereby
designate the affirmed rejections of claims 2-7, 10, and 12 under 35 U.S.C. §
102(e) and of claim 9 under 35 U.S.C. § 103(a) in the previous decision on
rehearing as new grounds of rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING GRANTED

Appeal 2009-005273
Application 10/744,254

3

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CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 3020
BOCA RATON, FL 33487