Ex Parte Senda et al

Board of Patent Appeals and Interferences

Nov 12, 2010

10502686 (B.P.A.I. Nov. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENJI SENDA, TAKAHIRO MUKAI, and MASATOSHI IZAKI
____________________

Appeal 2009-013536
Application 10/502,686
Technology Center 2800

____________________

Before: JOSEPH F. RUGGIERO, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-013536
Application 10/502,686

INTRODUCTION
Appellants’ Request for Rehearing, filed October 25, 2010, contends
that we erred in our Decision on Appeal entered August 25, 2010, in which
we affirmed the rejection of claims 1-25 and 28 under 35 U.S.C. § 103 as
unpatentable over the combination of Tanaka and Kawanishi. Appellants
wish to direct the Board’s attention to newly obtained evidence of
unexpected results (Req. for Reh’g 1).

OPINION
We maintain the rejection of claims 1-25 and 28 under § 103 as
unpatentable over Tanaka in view of Kawanishi.
37 CFR 41.52 states, in pertinent part:
37 CFR 41.52. Rehearing.
(a)(1) Appellant may file a single request for rehearing
within two months of the date of the original decision of the
Board. No request for rehearing from a decision on rehearing
will be permitted, unless the rehearing decision so modified the
original decision as to become, in effect, a new decision, and
the Board states that a second request for rehearing would be
permitted. The request for rehearing must state with
particularity the points believed to have been misapprehended
or overlooked by the Board. Arguments not raised in the briefs
before the Board and evidence not previously relied upon in the
brief and any reply brief(s) are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) and (a)(3) of
this section. When a request for rehearing is made, the Board
shall render a decision on the request for rehearing. The
decision on the request for rehearing is deemed to incorporate
the earlier opinion reflecting its decision for appeal, except for
those portions specifically withdrawn on rehearing, and is final
for the purpose of judicial review, except when noted otherwise
in the decision on rehearing.
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Application 10/502,686

(2) Upon a showing of good cause, appellant may present a
new argument based upon a recent relevant decision of either
the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
made pursuant to § 41.50(b) are permitted.

37 CFR § 41.52 thus (1) requires that Appellants must state with
particularity the points believed to have been misapprehended or overlooked
by the Board, and (2) prohibits evidence not previously relied upon in the
brief and any reply brief(s) unless said evidence is based upon a recent
relevant decision of the Board or a Federal Court, or is responsive to a new
ground of rejection in the Decision.
Appellants have not satisfied either of these conditions. First, nowhere
in Appellants’ Request for Rehearing is any statement identifying with
particularity any point believed to have been misapprehended or overlooked
by the Board. Second, Appellants admit that their proffered evidence is
newly obtained, and make no representation that the new evidence is based
upon a recent Board or Court decision; Appellants’ evidence cannot be
responsive to a new ground of rejection because no new ground of rejection
was entered in the Decision.
Because Appellants have not satisfied the requirements of 37 CFR
§ 41.52, Appellants’ newly submitted evidence is not entitled to
consideration.

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Application 10/502,686

CONCLUSION
We have granted Appellants’ request for rehearing to the extent that
we have determined that Appellants’ newly obtained evidence is not entitled
to consideration. We decline to modify our decision in any way.
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).
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Appeal 2009-013536
Application 10/502,686

REHEARING DENIED

ELD

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