DENDEL, Joseph W. et al.

Patent Trials and Appeals BoardMar 26, 2020

14604184 - (R) (P.T.A.B. Mar. 26, 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. 14/604,184 01/23/2015 Joseph W. DENDEL 5395.P0017US 1150 23474 7590 03/26/2020 FLYNN THIEL, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER BASS, DIRK R ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 03/26/2020 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): DOCKET@FLYNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH W. DENDEL, ROGER TYRIA, DERIC HAUSMANN, and JOHANNES GERARDUS MARIA VERWATER Appeal 2019-003370 Application 14/604,184 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY W. ABRAHAM, and LILAN REN, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed February 27, 2020, for rehearing of our Decision dated December 27, 2019. In its Request, Appellant asks us to “reconsider the affirmation of the Examiner’s rejection of Claims 11–19 and 24–26 under 35 U.S.C. § 103.” Req. Reh’g 1. With regard to claim 11, Appellant notes that in rejecting claim 11 as being unpatentable in view of Geisbauer and Fongen, the Examiner “employed the embodiment of Fig. 8” of Geisbauer. Req. Reh’g 2. Appellant further notes that in its Appeal Brief, it asserted that the Appeal 2019-003370 Application 14/604,184 2 embodiment of Figure 8 of Geisbauer, combined with the teachings of Fongen, did not include all of the limitations of claim 11. Req. Reh’g 2. In our Decision, we indicated that the Examiner did not rely solely on the embodiment shown in Geisbauer Figure 8 as disclosing all of the limitations of claim 11. Decision 8–9. In particular, with regard to the requirement in claim 11 of “rotating the wiper relative to the cylinder thereby cleaning an interior surface of the cylinder,” we stated that the Examiner referred to paragraph 52 of Geisbauer, which expressly discusses the relative movement between a wiper and cylinder, and refers to the embodiment shown in Figure 11. Decision 8–9. In its Request, Appellant for the first time presents specific arguments regarding why the embodiment shown in Figure 11 of Geisbauer does not disclose all of the limitations in claim 11. Req. Reh’g 2–3. Appellant’s arguments in this Request are untimely because arguments in rehearing requests are limited to arguments made in the record unless a new ground of rejection is made or the argument concerns a recent relevant decision of the Board or a federal court, and neither exception applies here. See 37 CFR 41.52(a) (2019). Appellant contends that it did not present specific arguments directed at the embodiment shown in Figure 11 earlier because “the Examiner did not present any clear rejection of the claims employing any of FIGS 10–14.” Req. Reh’g 2. This argument, however, is undermined by the fact that Appellant does not dispute that the Examiner relied on paragraph 52 of Geisbauer in rejecting claim 11 or that paragraph 52 of Geisbauer discloses the relative movement between a wiper and cylinder, and refers to the embodiment shown in Figure 11. Appeal 2019-003370 Application 14/604,184 3 Nevertheless, we have considered Appellant’s belated arguments, and find them unpersuasive. Appellant argues that the embodiment in Figure 11 of Geisbauer mechanically compacts sludge within a cylinder, whereas claim 11 requires the opposite. As Appellant acknowledges, however, the embodiment shown in Figure 8 does not mechanically compact the sludge within the cylinder, as claim 11 requires. Thus, the evidence of record supports the Examiner’s determination that Geisbauer discloses this limitation of claim 11. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”); In re Arkley, 455 F.2d 586, 587–588 (CCPA 1972) (holding that picking, choosing, and combining various disclosures of a reference may be proper in an obviousness rejection under section 103). The same is true with respect to Appellant’s arguments regarding claims 24 and 25, as the Examiner did not rely on the embodiment shown in Geisbauer Figure 11 as disclosing the disputed limitations recited in those claims. In its Request, Appellant also argues that we should reverse the Examiner’s rejection of claim 17 because Jonsson does not disclose slots that “taper and have a smaller cross-sectional area at an inner entrance and a larger cross-sectional area at an outer exit.” Req. Reh’g 4–5. In particular, Appellant argues that “[w]hile a spacing between the slots 30 may taper in FIGS. 2A and 5 of [Jonsson], the slots 30 themselves in FIGS. 2A and 5 of [Jonsson] are not illustrated as tapering,” noting that “[b]oth side walls of the slots 30 are shown as being parallel.” Req. Reh’g 4–5. These specific Appeal 2019-003370 Application 14/604,184 4 arguments were not included in Appellant’s Appeal Brief, in which Appellant simply concluded that Jonsson does not disclose slots that taper, or its Reply Brief, which does not discuss Jonsson or this limitation in claim 17 at all. As such, they are not permitted pursuant to 37 CFR § 41.52(a)(1). Nor are they arguments that we misapprehended or overlooked. 37 CFR § 41.52(a)(1). Nevertheless, we have considered these arguments, and find them unpersuasive. Appellant acknowledges that Jonsson does depict tapering in Figures 2A and 5, but only for the “spacing between slots 30.” Req. Reh’g 4–5. Appellant, however, does not explain adequately what the “spacing between slots 30” in Figures 2A and 5 of Jonsson refers to, or direct us to a reference number identifying the spacing. Nor does Appellant direct us to any discussion in Jonsson of the “spacing between slots 30.” We note that Jonsson, in discussing Figure 2A states that “[t]he arrangement of filter channels 30 comprises a number of first coarse filter channels 20, second coarse filter channels 22, and fine filter channels 26 (as seen in the enlarged portion).” Jonsson ¶ 33. Furthermore, it is apparent from Figure 2A that channels 20 and 22 are wider towards the outer rim of wafer 28 than they are towards the center of wafer 28. Jonsson, Fig. 2A. Thus, the discussion of slots 30 in Jonsson’s specification and the depiction of these slots in Jonsson’s figures undermine Appellant’s argument that “slots 30 are shown to have a constant cross-sectional area.” Req. Reh’g 5. To the contrary, the preponderance of evidence in the record supports the Examiner’s determination that slots 30 taper and have a smaller cross- sectional area at an inner entrance and a larger cross-sectional area at an outer exit, as claim 17 requires. Appeal 2019-003370 Application 14/604,184 5 We adhere to our Decision for the reasons discussed above. Appellant’s rehearing request is denied. Outcome of Decision on Rehearing Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11, 12, 18, 19, 24–26 103 Geisbauer, Fongen 11, 12, 18, 19, 24–26 13 103 Geisbauer, Fongen, Sasaki 13 14–17 103 Geisbauer, Fongen, Sasaki, Jonsson 14–17 Overall Outcome 11–19, 24–26 Final Outcome of Appeal After Rehearing Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 20–26 112(b) Indefiniteness 1–10, 20– 23 24–26 1, 2, 8–12, 18–26 103 Geisbauer, Fongen 11, 12, 18, 19, 24–26 3, 13 103 Geisbauer, Fongen, Sasaki 13 4–7, 14–17 103 Geisbauer, Fongen, Sasaki, Jonsson 14–17 Overall Outcome 1–26 TIME PERIOD FOR RESPONSE 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).