Ex Parte Safwat

Patent Trial and Appeal Board

Mar 19, 2015

12589904 (P.T.A.B. Mar. 19, 2015)

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.
12/589,904 10/29/2009 Sharif Adham Safwat 2269 9695
7590 03/19/2015
Donald E. Schreiber
A Professional Corporation
Post Office Box 2926
Kings Beach, CA 96143-2926
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/19/2015 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
____________

Ex parte SHARIF ADHAM SAFWAT
____________

Appeal 2012-011442
Application 12/589,904
Technology Center 3600
____________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a request for rehearing under 37 C.F.R. § 41.52
seeking reconsideration of our Decision of January 2, 2015, in which we
affirmed the decision to reject claims 1–22 and 24–27 under 35 U.S.C.
§ 103(a).

ANALYSIS
A. Appellant’s Positions
First, Appellant asserts as “internally inconsistent” the finding, from
the prior Decision, that “by teaching that the seed mixtures includes ‘[a]t
least’ 105 of the listed species, Flora Locale expressly teaches the use of 122
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Application 12/589,904

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of the 122 seed species, which would include the claimed Lapsana
communis.” Dec. 8; Req. for Reh’g 6.
Second, Appellant contends that the finding discussed above
contradicts the teaching in Flora Locale that “describes a prior actual
planting during 1977 of only 105 seed types.”
1
Req. for Reh’g 6–7. In
addition, Appellant contends that the statement relied on for the finding
discussed above “applies to a prospective planting, and there exists no
evidence in Flora [L]ocale that the planting actually occurred.” Id. at 6 n.14
(emphasis omitted).
Third, Appellant contends that, with the finding discussed in
Appellant’s first argument, the Decision presents a new ground of rejection.
Id. at 8. According to Appellant, “the differences between the Decision’s
finding” and “page 7 of the Examiner’s Answer conclusively demonstrates
that the Decision’s finding presents a new ground of rejection in which 105
seed types equals 122 seed types, a concept that appears nowhere in
Examiner’s Answer.” Id. (emphasis omitted).
Fourth, Appellant contends that the Decision is “fatally incomplete”
because it does not address “what the prior art would teach ‘one of ordinary
skill in the art.’” Id. at 10.
Fifth, Appellant contends that certain language, including the phrases
“whitetail deer” in the preambles to claims 1 and 14, “specify not only that
those claims involve ‘whitetail deer,’ but also respectively specify a purpose
for each of the claimed inventions.” Id. at 11. Based on these alleged

1
We understand this statement to refer to a planting in 1997, not
1977. See Req. for Reh’g 7 n.15 (discussing 1994 and 1997 seed mixes).
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Application 12/589,904

3
limitations in the preambles, Appellant asks “what of Flora Locale’s
teachings predicts that they should employ Lapsana communis seed for
either purpose?” Id. at 12 (emphasis omitted). In addition, Appellant
contends that “there exists no teaching in [Flora Locale] that would direct
one of ordinary skill to try planting any of the 122 seed types listed there to
assess whether whitetail deer might browse one or more of them.” Id. at 14
(emphasis omitted).
B. Discussion
As to Appellant’s first argument, we conclude that the finding at issue
was not internally inconsistent. Inherent in the prior finding is the fact that,
by teaching that the disclosed seed mixtures include “[a]t least” 105 of the
listed species, Flora Locale teaches the use of 105, 106, 107 . . . 120, 121,
and 122 of the 122 listed seed species. Thus, as previously found, Flora
Locale “expressly teaches the use of 122 of the 122 seed species, which
would include the claimed Lapsana communis.” Dec. 8.
We turn now to Appellant’s second argument, which was raised for
the first time in the Request for Rehearing. Based on the Examiner’s
reliance on the same disclosure from Flora Locale at issue (see Supp. Ans. 7
2

(discussing the disclosure of “at least 105 species”)), Appellant could and
should have raised these arguments in the prior briefing. The purpose of a
request for rehearing is to provide an opportunity to identify “points believed
to have been misapprehended or overlooked by the Board,” 37 C.F.R.
§ 41.52(a)(1) (2012). Because this argument was not raised in the prior

2
Throughout this Opinion, we shall refer to the Examiner’s Answer
(mailed May 22, 2012) as “Supp. Ans.”
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Application 12/589,904

4
briefing, it could not have been “misapprehended” or “overlooked.”
Accordingly, we will not address the substance of this argument. See id.
(“Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing . . . .”).
As to Appellant’s third argument, we conclude that the Decision did
not present an undesignated new ground of rejection because the “basic
thrust of the rejection at the examiner and board level was the same” and
because Appellant “had fair opportunity to react to that rejection.” In re
Kronig, 539 F.2d 1300, 1303 (CCPA 1976). Both the Examiner and the
Board relied on the same disclosure at issue from Flora Locale, and reached
the same conclusion—that the limitations at issue did not render the claimed
inventions patentable over Flora Locale. See Dec. 7–8 (discussing Supp.
Ans.7). In addition, contrary to Appellant’s position, the Decision did not
find that “105 seed types equals 122 seed types . . . .” Req. for Reh’g 8. For
reasons similar to those discussed with regard to Appellant’s first argument,
the teaching of “105 seed types,” is different than Flora Locale’s actual
teaching of “[a]t least” 105 of the listed species.
We turn now to Appellant’s fourth argument. To the extent
contentions regarding the teachings of the prior art were raised, the Decision
fully addresses those issues. See, e.g., Dec. 7–8. Further, Appellant has not
identified support for the contention that, by not specifically reciting the
phrase “one of ordinary skill in the art,” the Decision is rendered “fatally
incomplete.” Req. for Reh’g 10; see 37 C.F.R. § 41.52(a)(1) (“The request
for rehearing must state with particularly the points believed to have been
misapprehended or overlooked by the Board.”) (emphasis added).
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Application 12/589,904

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As to Appellant’s fifth argument, the contention that the preambles’
recitations of “whitetail deer” limit claims 1 and 14 was addressed in the
prior Decision. See Dec. 9 (discussing Apple Computer, Inc. v. Articulate
Sys., Inc., 234 F.3d 14, 22 (Fed. Cir. 2000)). As to the alleged new use, the
Decision addresses that contention, holding that it “has no grounding or
basis in the claims as currently drafted.” Dec. 9 (discussing Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005)). Appellant
has not particularly pointed out any alleged misapprehension by the Board
on these issues. See 37 C.F.R. § 41.52(a)(1). Lastly, Appellant’s argument
regarding “obvious to try” is inapt. Here, the premise to Appellant’s
argument—that Flora Locale does not teach “the planting of all 122 seed
types” (Req. for Reh’g 14)—is incorrect. As discussed above, Flora Locale
“expressly teaches the use of 122 of the 122 seed species, which would
include the claimed Lapsana communis.” Dec. 8.

CONCLUSION
Appellant’s request has been granted to the extent that the Decision
has been reconsidered, but, for the reasons set forth above, is denied with
regard to making any modifications to the Decision.

TIME PERIOD FOR RESPONSE
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 DENIED
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