Ex Parte 6386642 et al

Patent Trial and Appeal BoardSep 18, 2013

95000018 (P.T.A.B. Sep. 18, 2013)

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. 95/000,018 05/30/2003 6386642 LII70R US 4588 4859 7590 09/19/2013 MACMILLAN SOBANSKI & TODD, LLC ONE MARITIME PLAZA FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604-1619 EXAMINER FLANAGAN, BEVERLY MEINDL ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/19/2013 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 ____________ LACKS INDUSTRIES, INC. Requester and Cross-Appellant v. HAYES LEMMERZ INTERNATIONAL, INC. Patent Owner and Appellant ____________ Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION UNDER 37 C.F.R § 41.77(f) This is a new decision under 37 C.F.R. § 41.77(f) in an inter partes reexamination of US 6,386,642 (“the „642 patent”). The decision is a response to 1) the Patent Owner‟s Request to Reopen Prosecution after a decision by the Board entering a new ground of rejection under 37 C.F.R. § 41.77(b) of claims 1-28; and 2) the Examiner‟s subsequent determination under 37 C.F.R. § 41.77(d) that the new rejection had been overcome. Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 2 The Board‟s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b) and 134 (2002), and 315. We modify the Decision on Appeal mailed July 9, 2010 (“Dec. App.”) by withdrawing the new ground of rejection of claims 1-28 under 37 C.F.R. § 41.77(b) because it was overcome by Patent Owner‟s amendment to claims 1, 13, and 22. FINDINGS OF FACT (“FF”) 1. In the decision mailed July 9, 2010 in Appeal No. 2010-005186 (Dec. App.), the Board of Patent Appeals and Interferences (now, the Patent Trial and Appeal Board (“PTAB”)) reversed the Examiner‟s decision to deny the patentability of the claims under 35 U.S.C. §§ 102 and 103, and also reversed the Examiner‟s decision not to adopt the rejection under 35 U.S.C. § 314(a) of claims 1, 13 and 22 and dependent claims 2-12, 14-21 and 23-28, which incorporate all the limitations of the independent claims (Dec. App. 25-28). Under 37 C.F.R. § 41.77(a), the reversal of an examiner's determination not to make a rejection proposed by the third party requester is designated as a new ground of rejection. The PTAB thus entered a new grounds of rejection, pursuant to 37 C.F.R. § 41.77(b), of claims 1-28 under 35 U.S.C. § 314(a) for impermissibly enlarging the scope of the claims in an inter partes reexamination (Dec. App. 33-34). 2. On August 9, 2010, the Third Party Requester filed a request for a rehearing pursuant to 37 C.F.R. § 41.79. The request for rehearing in a decision was denied (Decision on Request for Rehearing, Dec. 1, 2010 (“Req. Reh‟g”)). Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 3 3. Electing to reopen prosecution under 37 C.F.R. § 41.77(b)(1), Patent Owner filed a compliant 1 response on September 7, 2011, amending claims 1, 13, and 22. 4. Under 37 C.F.R. § 41.77(c), the Third Party Requester filed comments on August 31, 2011 which were said to be responsive to Patent Owner‟s amendment (Comments by Third Party Requestor (“TPR Comments”)). The Requester argued in the comments that claims 1-28 of the „642 patent are unpatentable under 35 U.S.C. § 103 and that the PTAB “did not consider many of the §103 rejections as discussed herein” (TPR Comments 2). Requester explained why claims 1-4, 6-9, 12-14, 16-18, 21- 23, 25, and 25-27 were obvious in view of the various proposed rejections (id. at 2-6) and claims 1-23, 25, 27, and 28 over another combination of prior art publications (id. at 5). Requester did not identify where in the record these § 103 rejections had been proposed and/or discussed previous to their discussion in the TPR Comments. 5. The Requester did not provide comments on whether the Patent Owner‟s amendment overcame the new ground of rejection. 6. Under 37 CFR § 41.77(d), following a response by the patent owner and comments by the requester, the Examiner is required to issue a determination that the rejection is maintained or has been overcome. After considering these submissions, the Examiner determined that the claim amendments “reinstate[ ] clause (d) to be identical to clause (d) as issued in 1 Several previous responses by the Patent Owner, including accompanying claim amendments, were found to be defective and were not entered by the Examiner. The Requester‟s comments were made in response to one of these defective responses. Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 4 claims 1, 31 [sic; 13] and 22 of the '642 patent.” (41.77(d) Determination 9, mailed October 18, 2011). The Examiner determined that Patent Owner‟s response overcomes the new ground of rejection because it removed the amendment to the claims which caused them to be broader in scope than the original claims (id.). 7. The Examiner found that the Requester‟s comments regarding the “newly proposed” § 103 rejections (FF4) were improper because they were not related to the new ground of rejection (41.77(d) Determination 3). The Examiner wrote: The August 31, 2011 comments by the third party requester are deemed improper, are not considered, and are hereby expunged from the proceeding file by being "closed." Specifically, the comments are not deemed as a bona fide response because requester makes no attempt to comply with the requirements of 37 CFR 41.77 and reexamination procedures. For example, requester fails to show that the comments are limited to issues raised by the new ground of rejection under 35 USC 314(a). As provided by 37 CFR 41.77, prosecution is closed except for issues regarding the new ground of rejection. Additionally, the requester fails to show that the newly proposed rejections were necessitated by the patent owner's most recent amendment. . . . Moreover, the examiner cannot fathom how an amendment reinstating clause (d) to how it appeared in the '642 patent in claims 1, 13 and 22 would necessitated new grounds of rejection that could not have [been] earlier presented. For these reasons and in the interest of special dispatch, the August 31, 2011 comments are deemed improper and will not be considered or further addressed in this action. (Id. at 3.) Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 5 8. Pursuant to § 41.77(e), Requester submitted a response to the Examiner‟s determination (TPR 41. 77(e) Response, dated November 18, 2011). Requester contends: The fact is that the claims that appeared before the Board were the claims as amended and accepted by the Examiner in the patent owner's response of May 28, 2004. These claims did not include the language of section (d) and therefore, the third party requestor was never given an opportunity to comment on the language of section (d) as currently presented. (Id. at 4.) Requester further contends: [T]he amendment presently before the Examiner has never been previously made of record, has never been considered by the Examiner or the Board, and has never been commented on by the Requestor in a manner which those comments were considered by the Examiner, the Requestor respectfully submits that the amendment does in fact necessitate new grounds for rejection to which the Requestor is entitled to comment. (Id.) 9. Requester repeats their argument that claims 1-28 2 are not patentable under 35 U.S.C. § 103. Requester did not identify where in the record these § 103 rejections (characterized by the Examiner as “newly proposed”) had been proposed and/or discussed previous to their discussion in the TPR Comments. DISCUSSION Section 314 Rejection The Examiner determined that the new ground of rejection under 35 U.S.C. § 314(a) is overcome by the Patent Owner‟s amendment to the claims 2 However, the actual proposed rejections did not include claims 24 and 26. Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 6 because it eliminates the language deemed by the PTAB to impermissibly broaden the scope and reinstated the language in its place which was part of the original claims (FF6). We agree with the Examiner‟s determination and withdrawn the new ground of rejection of claims 1-28 set forth the Decision on Appeal in view of the amendments to claims 1, 13, and 22 under 37 C.F.R. § 41.77(b)(1). We therefore modify the Decision on Appeal by withdrawing pages 25-28 and 33-34 relating to the new ground of rejection. Rejections under § 103 Requester continues to argue that the claims are not patentable under 35 U.S.C. § 103, proposing several new § 103 rejections that Requester contends make claims 1-23, 25, 27, and 28 obvious to one of ordinary skill in that art (FF4 & 9). The Examiner found that the proposed rejections were outside the scope of 37 C.F.R. § 41.77(c) which states that a requester‟s response “must be limited to the issues raised by the Board‟s opinion reflecting its decision and the owner’s response.” (FF7; emphasis added.) Because the “newly proposed rejections” were not related to the PTAB decision or Patent Owner‟s response, the Examiner did not consider them in the subsequent determination under 37 C.F.R. § 41.77(d). Requester did not challenge the Examiner‟s determination that the discussed rejections were “newly proposed.” Requester contends that the rejections were necessitated by amendment because the amendments had never been considered before by the Examiner or the PTAB, and the Requester was never given an opportunity to comment on the language of section (d) of claim 1 as currently presented (FF8). Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 7 Procedurally, to the extent Requester asks that we order the Examiner to consider the newly proposed rejections, Requester has not identified the statutory or other authority which gives this Board supervisory control of the Examiner to enable the Board to make such order. The Requester‟s recourse, for example, was a petition to direct the Examiner to reconsider the rejections. A petition does not appear to have been filed. Substantively, we agree with the Examiner‟s determination that the rejections proposed by the Requester are outside the scope of § 41.77(c). Requester contends that the rejections were necessitated by amendment and that Requester had never been given an opportunity to comment on the claim amendment (FF8). However, in the initial Request for Reexamination (Rexam. Req. dated May 30, 2003), Requester had the identical claim language before them and had addressed where such language could be found in the prior art. See, e.g., Rexam. Req., p. 8 (claim 1), p. 14 (claim 13), and p. 21 (claim 22). The prior art included Post (pp. 4, 14, and 21) and Hampshire (pp. 27-28, 36, and 43), and Todd (p. 47), which continue to be cited in this proceeding, despite the broadening amendment to the claims. The newly proposed rejections also cite Post and Hampshire (TPR Comments 2 and 5). Requester did not provide sufficient explanation as to why reinstating language in the claim, which was present when the original request for reexamination was made, necessitates new rejections, when the originally proposed rejections were for claims which had the very same claim language introduced by amendment by Patent Owner in their response to the section 314 rejection. Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 8 In addition to this, the same prior art has been cited throughout the proceeding, including before and after the amendment was introduced into the claims, indicating that the amendments to the claims did not substantially change the basis of the rejection. SUMMARY We modify the Decision on Appeal mailed July 9, 2010 by withdrawing the new ground of rejection of claims 1-28 and withdrawing pages 25-28 and 33-34 relating to the new ground of rejection in view of the amendments to claims 1, 13, and 22 under 37 C.F.R. § 41.77(b)(1). Appeal 2013-001715 Reexamination Control 95/000,018 Patent 6,386,642 9 PATENT OWNER: MACMILLAN, SOBANSKI & TODD, LLC One Maritime Plaza, Fifth Floor 720 Water Street Toledo, OH 43604-1619 THIRD PARTY REQUESTER: Brian E. Ainsworth Prince, Heneveld, Cooper, DeWitt & Litton, LLP 695 Kenmore, SE P.O. Box 2567 Grand Rapids, MI 49501