Ex Parte Lennon et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10694153 (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.
10/694,153 10/27/2003 Eric Edward Lennon KCX-1359 (18231) 3016
7590 07/23/2012
Mr. Stephen E. Bondura
Dority & Manning, P.A.
P.O. Box 1449
Greenville, SC 29602
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
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
____________

Ex parte ERIC LENNON, THOMAS BROCK,
BRYAN HAYNES, and DOUGLAS HULSLANDER
____________

Appeal 2010-005996
Application 10/694,153
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52(a)(1), Appellants request rehearing of
our Decision of June 29, 2012 (“Decision”), affirming the Examiner's
rejection of claims 1, 11, and 23 on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claim 1 of copending Application
10/687,006 (now U.S. Patent No. 7,504,060 B2). (See the Request for
Rehearing (“Req.”) dated July 9, 2012, 1-2.)
Appellants specifically request that:
[T]he Board to reconsider its affirmance of rejection (11)
[sic, rejection (12)] for obviousness-type double patenting. The
affirmance is believed to be improper because as expressly
stated in the Advisory Action mailed on June 2, 2009, the
Appeal 2010-005996
Application 10/694,153

2
obviousness-type double patenting rejection was overcome by
the argument on pages 8-9 of applicants' March 2009 Response
to Final Office Action. Thus, this obviousness-type double
patenting rejection was eliminated from the case. Accordingly,
the Board lacked jurisdiction over any such obviousness-type
double patenting rejection. [(See Req. 1.)]

Contrary to Appellants’ arguments, however, the Examiner has never
withdrawn the rejection of claims 1, 11, and 23 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claim 1
of copending Application 10/687,006 (now U.S. Patent No. 7,504,060 B2)
set forth in the final Office (“FA”) action dated March 3, 2009 and the
Answer (“Ans.”) dated November 9, 2009. As acknowledged by Appellants
at page 2 of the Request for Rehearing, the Advisory Action (“AA”), mailed
June 2, 2009, indicates that only “the non-statutory obviousness-type double
patenting rejection of claims 1, 11, 23 over claims 1, 5, and 11 of US. Patent
No. 7,448,411 B2” was withdrawn. (See also AA 2, FA 4, Ans. 3 and
Decision 2, footnote 3.)
It follows that the nonstatutory obviousness-type double patenting
rejection of claims 1, 11, and 23 over claim 1 of copending Application
10/687,006 (now U.S. Patent No. 7,504,060 B2) maintained in the Answer
was properly before us.1 Accordingly, we find no reversible error in our
Decision affirming the nonstatutory obviousness-type double patenting

1 Even if the Examiner has erroneously not designated any obviousness-type
double patenting rejection set forth in the Answer as a new ground of
rejection, it is properly before us when Appellants fail to file a petition in a
timely manner to designate the rejection as a new ground of rejection and/or
fail to choose an option to further prosecute before the Examiner.
Appeal 2010-005996
Application 10/694,153

3
rejection of claims 1, 11, and 23 as unpatentable over claim 1 of copending
Application 10/687,006 (now U.S. Patent No. 7,504,060 B2).
In conclusion, based on the foregoing, we have granted Appellants’
request to the extent that we have reconsidered our Decision, but we deny
Appellants’ request to make any change therein.
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).

DENIED

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