Ex Parte 6991298 et al

Patent Trial and Appeal Board

Mar 2, 2016

95001028 (P.T.A.B. Mar. 2, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,028 01/30/2008 6991298 201/1966US 5834
22822 7590 03/03/2016
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
ST LOUIS, MO 63101
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/03/2016 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
____________

SHIMANO INC.,
Requester,

v.

Patent of COMPOSITECH, INC.,
Patent Owner and Appellant
____________

Appeal 2015-007618
Reexamination Control 95/001,028
Patent 6,991,298 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)

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This is another decision under 37 C.F.R. § 41.77(f). On May 29,
2013, in our previous decision under 37 C.F.R. § 41.77(f) (Appeal No.
2013-001717, “Previous Decision”) in which we modified our decision of
January 28, 2011 (Appeal No. 2011-000454, “First Decision”),1 we set forth
the following new ground of rejection pursuant to 37 C.F.R. § 41.77(b):
Claims 17-30, 44-53, 58, and 101-114 under 35 U.S.C. § 112, first
paragraph, as lacking written description support for the term “generally
continuous.” (Previous Decision 12-13, 18.)
Also in the Previous Decision, we:
Agreed with the Examiner that claims 87-90, 93, and 95-100 would
have been obvious over the combination of Sargent2 and Olson3 (Previous
Decision 8, 16-18.);
Agreed with Patent Owner that the rejections of claims 1-9, 13, 15,
17-20, 23, 25-34, 37, 39-48, 51, 53-62, 65, 67-76, 79, 81-86, 101-104, 107,
and 109-114 as obvious over the combination of Sargent and Olson were not
well-founded (Previous Decision 8, 13-16); and
Concluded that claims 31-43, 54-57, 59-86, 91, 92, and 94 stand not
rejected. (Previous Decision 18.)

1 Our Previous Decision was a new decision following further proceedings
pursuant to the First Decision in which we designated an affirmance of the
Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1–9, 13, and 15 as
including new grounds of rejection and reversed the rejection under the same
statutory basis of claim 14 (First Decision 15–17).
2 U.S. Patent No. 5,975,645, issued Nov. 2, 1999.
3 U.S. Patent No. 5,415,463, issued May 16, 1995.
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In response to the Previous Decision, Patent Owner exercised its
option under 37 C.F.R. § 41.77(b)(1) to file a request to reopen prosecution,
proposing amendments to claims 17, 26, 30, 44, 45, 58, 101, 110, and 114,
which are the independent claims subject to the new ground of rejection
under 35 U.S.C. § 112, first paragraph, to delete the term “generally” in
order to overcome the rejection. ((Patent Owner’s Response Pursuant to 37
C.F.R. § 41.77(b)(1) in Reexamination, filed June 28, 2013, hereinafter “PO
41.77(b)(1) Resp.” 47-48.) Patent Owner also noted that with respect to
claims 87-90, 93, and 95-100, Patent Owner is not seeking rehearing of the
decision rejecting those claims, and would consent to an Examiner’s
amendment to cancel those claims. (PO 41.77(b)(1) Resp. 48, FN1.)
Requester Shimano, Inc. filed a response under 37 C.F.R. § 41.77(c).
(Requester Response Pursuant to 37 C.F.R. § 41.77(c) in Reexamination,
filed July 9, 2013, hereinafter “Req. 41.77(c) Resp.”) Requester did not
challenge Patent Owner's amendments, but rather presented arguments
addressing the presence of duplicate claims and further reiterated
Requester’s position presented in Third Party Requester’s Comments of
December 16, 2011 that certain claims are unpatentable over prior art. (Req.
41.77(c) Resp. 1-4.)
An order granting Patent Owner’s request to reopen and remand the
inter partes reexamination to the Examiner was issued. (“ORDER
REMANDING INTER PARTES REEXAMINATION UNDER 37 C.F.R.
§ 41.77(d) TO THE EXAMINER”, hereinafter “Remand Order” mailed
February 27, 2014.) In the Remand Order, it was stated that the Examiner
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need not consider Requester's Comments as they were not responsive to
Patent Owner's amendments to the claims. (Remand Order 2.)
An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued
on March 24, 2014. (Hereinafter, “Ex. Det.”) In the Examiner’s
Determination, the Examiner determined that the rejection under 35 U.S.C.
§ 112, first paragraph has been overcome. (Ex. Det. 4-5.) The Examiner
rejected claims 44 and 58 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicants regard as the invention, because claims 44 and
58 are identical duplicate claims of claim 30. (Ex. Det. 3-4.) The Examiner
also noted that claims 54-57 were identical duplicate claims of claims 40-43.
(Ex. Det. 4.)
Patent Owner filed a response to the Examiner’s Determination
(Response Pursuant to 37 C.F.R. § 41.77(e) in Reexamination filed April 23,
2014 (hereinafter, “PO 41.77(e) Resp.”). In the 37 C.F.R. § 41.77(e)
response, Patent Owner agreed to cancel claims 44 and 54-58, and reiterated
its consent to cancel claims 87-90, 93, and 95-100. (PO 41.77(e) Resp. 2.)
Pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to
incorporate our earlier decisions, except as indicated.

DISCUSSION
Written Description Support for Claims 17-30, 44-53, 58, and
101-114
As noted above, claims 17, 26, 30, 44, 45, 58, 101, 110, and 114 were
amended to delete the term “generally” from the term “generally
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continuous.” As we stated in the Previous Decision: “our review of those
portions of the ‘298 Patent, while supporting a continuous FRP [fiber resin
plastic] body, do not provide support for a ‘generally’ continuous FRP
body.” (Previous Decision 12-13.)
Accordingly, we agree with the Examiner’s determination that the
rejection of claims 17-30, 44-53, 58, and 101-114 under 35 U.S.C. § 112,
first paragraph set forth in the Previous Decision has been overcome.

Rejection of Claims 44 and 58 under 35 U.S.C. § 112, second
paragraph
As noted above, the Examiner rejected claims 44 and 58 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicants regard
as the invention, because claims 44 and 58 are identically duplicative of
claim 30. (Ex. Det. 3-4.)
We observe that Patent Owner has not provided any substantive
argument with respect to this ground of rejection in the 37 C.F.R. § 41.77(e)
response. (PO 41.77(e) Resp. 2.) Although Patent Owner has offered to
cancel claims 44 and 58 as noted above, we review the claims based on their
current status. As a result, we discern no error in the Examiner's
determination that claims 44 and 58 are indefinite. (See Previous Decision
11, discussing the possible duplicative effect of any further amendments of
claims 44 and 58.)

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Other Issues
We acknowledge the Examiner’s observation regarding claims 54-57,
(not subjected to the new ground of rejection set forth in the Previous
Decision). (Ex. Det. 4.) In view of Patent Owner’s authorization to cancel
those claims (PO 41.77(e) Resp. 2), we view it as unnecessary to raise any
further issues regarding claims 54-57.
Regarding the rejection of claims 87-90, 93, and 95-100 under 35
U.S.C. § 103(a) as obvious over the combination of Sargent and Olson, we
acknowledge that Patent Owner has offered to cancel these claims, and
emphasize that this decision is deemed to incorporate our findings and
analysis with respect to this ground in the Previous Decision pursuant to 37
C.F.R. §41.77(f). (See Previous Decision 8, 16-18.)

CONCLUSION
Accordingly, the current status of the claims is as follows:
Claims 44, 58, 87-90, 93, and 95-100 stand rejected but, together with
claims 54-57, have been authorized for cancellation.
Claims 1-9 and 11-15, 17-43, 45-57, 59-86, 91, 92, 94, and 101-114
are not rejected.
Claims 10 and 16 are cancelled. (See Patent Owner's Appeal Brief filed
November 23, 2009 at 2.)

In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
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in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

37 C.F.R. §41.77(f); AFFIRMED-IN-PART

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ack
PATENT OWNER:

LEWIS, RICE & FINGERSH, LC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
ST LOUIS MO 63101

THIRD-PARTY REQUESTER:

David L. Tarnoff
GLOBAL IP COUNSELORS, LLP
1233 Twentieth Street, NW, Suite 700
Washington, DC 20036