Ex parte WOODRUFF

Board of Patent Appeals and Interferences

Sep 15, 1998

08480579 (B.P.A.I. Sep. 15, 1998)

Application for patent filed June 7, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KEITH F. WOODRUFF
_____________
Appeal No. 97-3718
Application 08/480,5791
______________
ON BRIEF
_______________
Before COHEN, MEISTER and McQUADE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
ON REQUEST FOR REHEARING
The appellant requests we reconsider our decision mailed
on August 11, 1998 wherein we (1) reversed the rejection of
claim 1 under 35 U.S.C. § 102(a), (2) affirmed the rejection
of claims 1-3 and 13 under 35 U.S.C. § 102(b), (3) affirmed
Appeal No. 97-3718
Application 08/480,579
2
the rejection of claims 5 and 6 under 35 U.S.C. § 103, (4)
reversed the rejection of claims 4 and 19 under 35 U.S.C. §
102(b) and (5) reversed the rejection of claim 20 under 35
U.S.C. § 103. The request is directed to claim 11 (which was
inadvertently omitted from the above-noted rejections) and to
our affirmance of claims 5 and 6 under 35 U.S.C. § 103.
As to claim 11 (which depends from claim 4), the numeral
11 was inadvertently omitted from our decision in line 14 of
page 8, and lines 2 and 12 of page 10. Thus, "claims 4 and
19" in each of these lines should have read -- claims 4, 11
and 19 --.
With respect to claims 5 and 6, the request states that:
The decision by the Board affirmed the
rejection of dependent claims 5 - 6,
without considering these claims on the
merits, because Applicant, in its Appeal
Brief, inadvertently grouped Claims 5 and 6
together with independent Claim 1 (not
Claim 4) and did not separately argue
Claims 5 - 6. However, since Claim 5
depends from Claim 4 and Claim 6 depends
from Claim 5, Claims 5 - 6 should have been
more accurately and appropriately grouped
(and argued) together with Claim 4, the
patentability of which was argued
separately from independent Claim 1 (pages
11 - 15 of Applicant's Appeal Brief filed
on October 22, 1996). [Page 2.]
Appeal No. 97-3718
Application 08/480,579
3
In view of the fact that claims 5 and 6 depend directly or
indirectly from claim 4 (the rejection of which was reversed
in our decision) we will, in the interest of fairness,
reconsider our decision as though claims 5 and 6 had been
grouped with claim 4 inasmuch as the appellant's grouping of
claims 5 and 6 with claim 1 was inadvertent. Our decision is
therefore modified by changing our affirmance of claims 5 and
6 under 35 U.S.C. § 103 to a reversal.
In summary:
The rejection of claim 1 under 35 U.S.C. § 102(a) as
being anticipated by DowElanco is reversed.
The rejection of claims 1-3 and 13 under 35 U.S.C. §
102(b) as being anticipated by Weinblatt is affirmed.
The rejection of claims 4, 11 and 19 under 35 U.S.C.
§ 102(b) as being anticipated by Weinblatt is reversed.
The rejection of claims 5, 6 and 20 under 35 U.S.C. § 103
as being unpatentable over Weinblatt is reversed.
The appellant's request is granted to the extent of
reconsidering our decision and making the above-noted
modifications.
Appeal No. 97-3718
Application 08/480,579
4
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
MODIFIED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-3718
Application 08/480,579
5
JMM:yrt
Mark P. Stone
1100 High Ridge Road
Stamford, CT 06905