John Power et al.

Patent Trials and Appeals Board

Jan 10, 2020

12583256 - (R) (P.T.A.B. Jan. 10, 2020)

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.
12/583,256 08/17/2009 John Power 016770-006712.10 6515
21968 7590 01/10/2020
NEKTAR THERAPEUTICS
455 Mission Bay Blvd., South, Suite 100
San Francisco, CA 94158
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
01/10/2020 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN POWER, DESMOND REGAN, and
DECLAN MORAN
____________________

Appeal 2018-002136
Application 12/583,256
Technology Center 3700
____________________

Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
BRETT C. MARTIN, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2018-002136
Application 12/583,256

2
STATEMENT OF THE CASE
This is a response to Appellant’s Request for Rehearing (“Request” or
“Req.”) of the Board’s Decision of October 11, 2019 (“Decision” or “Dec.”).
Requests for Rehearing are limited to matters overlooked or misapprehended
by the Panel in rendering the original decision. See 37 C.F.R. § 41.52.
OPINION
Appellant takes issue with our statement in the Decision that
“Appellant does not explain why the embodiment depicted in Figure 5 of
Heinonen, on which the Examiner specifically relies to teach the claimed
gravitational flow of liquid medicament from a reservoir to an aerosol
generator [Ans. 15], does not teach this limitation.” Req. 2 (quoting Dec. 5).
According to Appellant, “[p]ages 8–12 of the Appeal Brief provided a full
explanation of why Heinonen does not teach the claimed gravitational flow
features.” Id. This is not persuasive. Nowhere in pages 8–12 of the Appeal
Brief does Appellant cite to, much less discuss, the embodiment depicted in
Heinonen Figure 5 (Appellant does not dispute that it is this embodiment on
which the Examiner relied to teach the claimed gravitational flow of liquid
medicament from a reservoir to an aerosol generator). See, e.g., id. at 10
(citing portions of Heinonen that discuss embodiments depicted in Figures 2
and 7 of Heinonen).
Appellant goes on to address, for the first time, Heinonen’s Figure 5
embodiment. Req. 3–4. This is a new argument not presented by Appellant
in the Appeal Brief, and thus will not be considered on reconsideration. “A
party cannot wait until after the Board has rendered an adverse decision and
then present new arguments in a request for reconsideration.” Cooper v.
Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998); see 37 C.F.R. § 41.52
Appeal 2018-002136
Application 12/583,256

3
(“Arguments not raised, and Evidence not previously relied upon, pursuant
to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section.”).1
DECISION
For the above reasons, Appellant’s request for rehearing is denied.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED

1 Even if we were to consider Appellant’s remarks regarding Heinonen’s
Figure 5 embodiment, they would not persuade us that we overlooked or
misapprehended any matter in rendering our Decision. For example,
Appellant acknowledges that in this embodiment liquid medicament flows
from reservoir 34a to the nebulizer via “hydrostatic pressure,” but does not
explain how this differs from the claimed gravitational flow of liquid from
the reservoir to the aerosol generator.