Ex Parte Sengupta

Patent Trial and Appeal Board

Oct 20, 2017

13920613 (P.T.A.B. Oct. 20, 2017)

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.
13/920,613 06/18/2013 Kuntal Sengupta IPV-030/7311272001 7263
23517 7590 10/24/2017
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
10/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kcatalano@morganlewis.com
patents @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNTAL SENGUPTA
Appeal 2017-000684
Application 13/920,6131
Technology Center 2400
Before MARC S. HOFF, SCOTT B. HOWARD, and ALEX S. YAP,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)
on October 6, 2017 (hereinafter “Request”), requesting that we reconsider
our Decision on Appeal of September 28, 2017 (hereinafter “Decision”), in
which we, inter alia, affirmed the rejections of claims 11 and 12 under 35
U.S.C. § 103 as being unpatentable over Sukegawa (US 7,120,278 B2, Oct.
10, 2006) in view of Fujimura (US 2005/0058337 Al, Mar. 17, 2005).
1 Appellant identifies Imprivata, Inc. as the real party in interest. Appeal Br.
2.
Appeal 2017-000684
Application 13/920,613
ANALYSIS
In our Decision, we reversed the rejection of claim 10. Decision 15—
16. Appellant argues our Decision incorrectly affirmed the rejections of
dependent claims 11 and 12, which depend, directly or indirectly, from
claim 10. Request 2. Upon further reconsideration, we agree with Appellant
and, accordingly, based on the record before us, reverse the rejections of
claims 11 and 12. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[Dependent claims are nonobvious if the independent claims from which
they depend are nonob vious.”).
Appellant’s Request for Rehearing has been granted to the extent that
our Decision has been reconsidered and we herein reverse the Examiner’s
rejection of claims 11 and 12. The rest of our Decision remains the same.
We have maintained our Decision to affirm the Examiner’s rejections of
claims 1—4, 24, and 25 and to the Examiner’s rejection of claims 5—10 and
13-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING GRANTED
2