David Crowther

Patent Trials and Appeals BoardDec 27, 2019

14697760 - (R) (P.T.A.B. Dec. 27, 2019)

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. 14/697,760 04/28/2015 David Crowther GINS 0135 PUS2 5477 22045 7590 12/27/2019 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER BRYANT, REBECCA CAROLE ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 12/27/2019 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID CROWTHER ____________________ Appeal 2018-0075101 Application 14/697,760 Technology Center 2800 ____________________ Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request for Rehearing (“Req. Reh’g”), dated September 30, 2019, of our Decision, mailed August 1, 2019 (“Decision”), wherein we affirmed the Examiner’s § 103(a) rejection of claims 34–60 and 65–77. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as GII Acquisition, LLC, d/b/a General Inspection, LLC. Appeal Br. 1. Appeal 2018-007510 Application 14/697,760 2 We have reconsidered our Decision, in light of Appellant’s comments in the Request for Rehearing, and we find no error in the disposition of the disputed § 103(a) rejection. In a request for rehearing, an appellant is charged with stating the points believed to have been misapprehended or overlooked by the Board. 37 C.F.R. § 41.52. We review the points of the Decision contested by Appellant and determine whether we, in fact, made an error in fact finding or applying the law, and further determine whether any error changes the outcome of the Decision when viewing all the evidence and arguments anew in light of the preponderance of the evidence standard. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument”); Gardner v. TEC Sys., Inc., 725 F. 2d 1338, 1344 (Fed. Cir. 1984) (any error concerning nonessential facts is harmless and not a basis for reversal). We have reviewed the arguments set forth by Appellant in the Request for Rehearing. Appellant argues that the Board “misapprehended what is disclosed within the prior art.” Req. Reh’g 2. Appellant contends that “the claim limitations require that both the upper and lower ends of the fastener be held, [and] that “the fastener be held in a vertical orientation.” Id. Appellant further argues that “the Board’s assertion that Reeves and Mufti collectively teach holding a fastener at both the upper and lower ends in a vertical orientation is erroneous.” Id. These arguments are not persuasive. With regard to Appellant’s first point, Appellant argues that “there is no mention in Mufti of securing both ends of the fastener.” Id. However, as Appeal 2018-007510 Application 14/697,760 3 discussed in our Decision, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” Dec. 8 (quoting In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). Reeves discloses holding a pipe (fastener) at opposite ends, e.g., by motor driven rollers (75), which support the pipe and restrict its movement. See Reeves Fig. 7. Appellant argues that in Reeves “it is necessary to only clamp the first end of the pipe to be inspected . . . and leave the second end . . . exposed.” Req. Reh’g. 2–3. To the extent that Appellant is arguing that “holding” in the claims requires clamping in place at both ends, we do not find support for such an interpretation in the claims or Specification. See generally Spec., Claims App. With regard to Appellant’s second point—that the fastener be held in a vertical orientation—we note that claim 34 recites “hold[ing] the fastener in a generally vertical orientation,” and claim 48 recites “holding the fastener . . . in a generally vertical orientation.” Claims App. 1, 3 (emphases added). Despite Appellant’s contention, neither claim requires that the fastener be held in a vertical direction. See id. As noted in our Decision, the Examiner found that the orientation of objects is a matter of perspective, and determined that the orientation serves no particular purpose in the claimed invention. Dec. 5 (citing Final Act. 12). We agree with the Examiner’s finding and conclusion. Moreover, Appellant acknowledges that Mufti discloses orienting a fastener “within a few degrees of vertical.” Req. Reh’g. 2; see also Mufti Fig. 2. The generally vertical orientation of the fastener in claims 34 and 48 Appeal 2018-007510 Application 14/697,760 4 does not serve to distinguish the claims from the prior art cited by the Examiner. No persuasive merit is present in Appellant’s arguments made in the Request for Rehearing. Thus, we decline to modify our decision to affirm the Examiner’s § 103(a) rejection of the appealed claims. This Decision on the Request for Rehearing incorporates our Decision and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). CONCLUSION In conclusion, based on the foregoing, this Request for Rehearing is denied with respect to making changes to the final disposition of the rejections therein. Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 34–60, 65– 77 103(a) Reeves, Mufti 34–60, 65– 77 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34–60, 65– 77 103(a) Reeves, Mufti 34–60, 65– 77 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2010). DENIED