Ex Parte Samn

Board of Patent Appeals and Interferences

Jan 6, 2012

10392768 (B.P.A.I. Jan. 6, 2012)

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.
10/392,768 03/19/2003 Jonathan Samn AUS920030152US1 8832
30449 7590 01/06/2012
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
NGUYEN, VAN KIM T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
01/06/2012 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 JONATHAN SAMN
____________________

Appeal 2010-000675
Application 10/392,768
Technology Center 2400
____________________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-000675
Application 10/392,768

2
Appellant requests reconsideration of our Decision of September 22,
2011 (“Decision”) wherein we sustained the Examiner’s rejections of
appealed claims 1, 3-7, 11-14, and 18-20 under 35 U.S.C. § 103(a).
Appellant contends that the Board misapprehended or overlooked
arguments made by Appellant for the first time in Appellant’s Reply Brief.
(Request for Rehearing, dated November 15, 2011, “Req.” 1.) Specifically,
Appellant argues that “37 CFR 41.43 (a)(1), which is cited and quoted in
MPEP § 1207.05, specifies that Appellant may introduce new issues into the
Reply Brief.” (Req. 2.) Appellant also asserts that “the preparation of the
Reply Brief by [a] new attorney is good cause to have the new issues raised
in the Reply Brief considered.” (Req. 3.)
We have reviewed our Decision in light of the arguments presented by
Appellant in the Request, however; we are not persuaded that our Decision
was in error.
Initially, we previously addressed whether arguments made for the
first time in a reply brief are to be considered in the Decision. (Decision 3,
n.3; 4; 6.) In addition, with respect to Appellant’s argument that because
MPEP § 1207.05 and 37 C.F.R. § 41.43 state that “the primary examiner
may . . . furnish a supplemental examiner’s answer responding to any new
issue raised in a reply brief,” Appellant is entitled to present new arguments
in a Reply Brief, Appellant has not demonstrated this rule to have any
bearing on the Board. See Ex Parte Morrison, 2010 WL 4789628, *1 (BPAI
2010). In fact, 37 C.F.R. § 41.43 only permits action on the part of the
primary examiner and is silent as to any actions to be taken or not to be
taken by the Board. Id. Indeed, as stated in Ex parte Borden, cited in the
Decision, consideration by the Board of new arguments presented for the
Appeal 2010-000675
Application 10/392,768

3
first time in the Reply Brief that could have been presented earlier would
“vitiate the force of the requirement in Board Rule 37(c)(1)(vii) that ‘[a]ny
arguments or authorities not included in the brief … will be refused
consideration by the Board, unless good cause is shown.”’ Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative).1 Although Ex parte
Borden may not be precedential, it is an informative decision, and therefore,
illustrates the general manner in which the Board will treat arguments in a
Reply Brief.
With respect to Appellant’s argument that there is sufficient “good
cause” presented here to warrant consideration of the Reply Brief, we
disagree with Appellant that the retention of a new attorney after filing the
Appeal Brief and prior to filing the Reply Brief constitutes good cause. To
find good cause on this basis would allow a party to allege good cause at any
time by retaining new counsel. Parties are bound by the conduct of prior
counsel. See Pioneer Inv. Serv. Co. v Brunswick Assoc., 507 U.S. 380, 396-
97 (1993).
Lastly, Appellant’s argument that the Examiner “opened the door” to
new arguments with respect to the rejection of claims 1, 3-7, and 14 under
35 U.S.C. § 112, second paragraph, is substantially the same as presented in

1 As noted in the commentary to the published Board Appeal rules, which
amend 37 C.F.R. §41. 41 to clarify that new arguments in a Reply Brief will
not be considered, and will take effect on January 23, 2012, “[t]he inability
to raise new arguments in a reply brief is inherent in the nature of a reply
brief; it must reply to either an argument or response in an answer or the
failure to include a response in an answer. The indefinitely delayed 2008
regulations made this requirement clearer, but it has always been a
requirement.” See Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals, 76 Fed. Reg. 72271 (proposed November
22, 2011) (to be codified at 37 C.F.R. pt. 41).
Appeal 2010-000675
Application 10/392,768

4
Appellant’s Reply Brief (p. 2) and addressed in the Decision. (Decision 3,
n.3.) Thus, we need not revisit that issue again in this request for rehearing.

In conclusion, based on the foregoing, we have granted Appellant’s
request to the extent that we have reconsidered our decision, but we deny
Appellant’s 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
ack