BRUKER CELLULAR ANALYSIS, INC. The TTAB rejected Applicant Berkeley Lights' quixotic request for reconsideration of the Board's
In a detailed review of the record and the decision, the Board found no substantive or procedural error. It rejected Berkeley's principal contention that the Board may not rely on "new arguments that the Examining Attorney never made" in reaching its decision. According to the TBMP, the Board "need not find that the examining attorney's rationale was correct in order to affirm the refusal to register, but may rely on a different rationale."
Although the Board may not rely on an "additional" or "new ground" for refusal - i.e., a different statutory ground than in the final action under appeal - the Board did not adopt a new ground for refusal.
[T]he mere descriptiveness refusal has remained the same since the first Office Action. Throughout prosecution and on appeal, the mere descriptiveness refusal was based on the meaning of the individual terms and their continued descriptive significance when used in combination in connection with Applicant's goods and services. Applicant was provided with the evidence supporting the refusal as attachments to the Office Actions, and had the opportunity to address the Examining Attorney's evidence and to provide evidence of its own in response, and Applicant did so.
The Board pointed out that, in any case, Berkeley could have addressed the "new arguments" in this request for reconsideration, but did not. Accordingly, the Board found no lack of notice of lack of due process here.
Finally, Berkeley's reliance on the so-called "rule of doubt" argument was misplaced, since the Board did not expressed any doubt in its decision.
To the contrary, based on our review of the record as a whole, including Applicant's own materials, we had "no doubt that consumers of Applicant's goods and services for testing cells on a microfluidic chip would immediately understand that DEEP OPTO PROFILING describes a key function and purpose of Applicant's chemicals and assays, namely, a self-described 'process' involving the use of optofluidic technology that depends on microfluidics," id. at 30-31, because the Examining Attorney had made of record sufficient evidence to establish a prima facie case for mere descriptiveness, and Applicant neither rebutted that evidence nor showed on this request for reconsideration why the Board's decision relying on that evidence was wrong.
And so, the Board denied the request for reconsideration.
TTABlogger comment: The Board repeatedly cites to the TBMP, which of course is not the law. The TBMP even says so in its own Introduction.
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