Ex Parte Zhao-Wilson et al

Patent Trial and Appeal Board

Oct 15, 2012

11378032 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/378,032 03/16/2006 Xi Zhao-Wilson 006182.P007 6384
8791 7590 10/16/2012
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
MARTINELL, JAMES
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
10/16/2012 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 XI ZHAO-WILSON,
PAUL C. WATKINS, and JOSEPH M. DHAHBI
__________

Appeal 2011-002666
Application 11/378,032
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered August
10, 2012 (“Decision”), which, in addition to ruling on a number of other
rejections, affirmed the Examiner’s rejection of claims 1-3, 5, and 6 under
35 U.S.C. § 102(b) as anticipated by Spindler,1 but reversed that rejection as
to claims 9, 10, and 21. We have granted Appellants’ request to the extent

1 U.S. Patent No. 6,406,853 B1 (issued June 18, 2002).
Appeal 2011-002666
Application 11/378,032

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we have reconsidered our original Decision in light of Appellants’ points,
but decline to change the Decision.
DISCUSSION
Appellants contend that, while our Decision addressed the anticipation
rejection over Spindler as to claims 1-3, 5, 6, 9, 10, and 21, the Decision
failed to address Appellants’ contentions regarding that rejection as to
claims 4, 7, 8, and 14, which were separately argued in the Appeal Brief
(Req. Reh’g 1-2). Thus, Appellants argue, because the Decision “failed to
comment in any manner on claims 4, 7, 8 and 14 . . . the status of the
rejections as to claims 4, 7, 8 and 14 is unclear. In view of the foregoing and
the arguments submitted in the Appeal Brief, correction and reversal as to
claims 4, 7, 8 and 14 is expressly requested” (id. at 2).
We are not persuaded that our Decision erred by not considering
whether Spindler anticipated claims 4, 7, 8, and 14.
We acknowledge that, in the Final Rejection from which this appeal
was taken, claims 4, 7, 8, and 14 were included in the Examiner’s
anticipation rejection over Spindler (see Final Rejection 5 (entered October
26, 2009)). We also acknowledge that sections “E” through “H” of the
Appeal Brief presented separate argument regarding those claims as to the
Spindler anticipation rejection (see App. Br. 15-20).2
However, in the Examiner’s Answer, the Examiner never included
claims 4, 7, 8, and 14 when listing the claims subject to the Spindler
anticipation rejection (see Ans. 3, 6, 7). The Examiner never mentioned any
of claims 4, 7, 8, and 14 when discussing that rejection, nor did the

2 Appeal Brief entered March 26, 2010.
Appeal 2011-002666
Application 11/378,032

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Examiner address Appellants’ separate arguments as to those claims (see id.
at 6-7).
When addressing Appellants’ arguments regarding the Spindler
anticipation rejection, the Examiner expressly stated that the arguments
presented in sections “D” and “I” were “unconvincing” (id. at 6). Notably,
however, the Examiner did not include or mention the arguments presented
in sections “E” through “H,” which are the arguments directed to claims 4,
7, 8, and 14, as being among those considered unpersuasive (see id. at 6-7).
Because the Examiner’s Answer did not state that claims 4, 7, 8, and
14 were rejected as anticipated over Spindler, the Examiner effectively
withdrew those claims from the rejection. The Examiner’s explicit
statement that sections “D” and “I” of the Appeal Brief were unconvincing,
while making no mention of sections “E” through “H,” supports the
conclusion that the Examiner deliberately withdrew the rejection as to
claims 4, 7, 8, and 14, particularly given the Examiner’s failure to make any
mention of those claims when discussing the Spindler anticipation rejection.
Thus, because the Examiner withdrew the Spindler anticipation
rejection from our consideration as to claims 4, 7, 8, and 14, there was, and
is, no adverse decision before us as to those claims with respect to that
rejection. It would therefore be improper to rule on that withdrawn
rejection. See 35 U.S.C. § 6 (Board’s duty is to review adverse decisions of
examiners); see also, Paperless Accounting, Inc. v. Bay Area Rapid Transit
System, 804 F.2d 659, 663 (Fed. Cir. 1986) (rejection in final rejection not
commented on in examiner’s answer not an adverse decision considered by
Board).
Appeal 2011-002666
Application 11/378,032

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In sum, because the Examiner’s Answer did not maintain the Spindler
anticipation rejection as to claims 4, 7, 8, and 14, the Examiner effectively
withdrew the rejection as to those claims. Because no anticipation rejection
of claims 4, 7, 8, and 14 over Spindler was before us, we are not persuaded
that our Decision erred in not considering whether Spindler anticipated those
claims. Accordingly, as Appellants’ arguments do not persuade us that the
Decision of August 12, 2012, misapprehended or overlooked any point of
fact or law, we decline to modify our original Decision.

TIME PERIOD
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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