Ex Parte 7513711 et al

Patent Trial and Appeal BoardApr 29, 2016

90013165 (P.T.A.B. Apr. 29, 2016)

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. 90/013,165 02/26/2014 7513711 Walter-711-Reexam 4516 60033 7590 05/02/2016 MARK TERRY, ESQ. 801 BRICKELL AVE., SUITE 900 Miami, FL 33131 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 05/02/2016 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 ____________________ Ex parte DAVID WALTER ____________________ Appeal 2015-006121 Reexamination Control 90/013,165 Patent US 7,513,711 B11 Technology Center 3900 ____________________ Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Issued to David Walter on April 7, 2009 (the ’711 patent). Appeal 2015-006121 Reexamination Control 90/013,165 Patent US 7,513,711 B1 2 The Patent Owner filed its REQUEST FOR REHEARING on September 30, 2015 (hereinafter "Rehearing Request" or "Rhrg. Req.") under 37 C.F.R. § 41.52,2 seeking rehearing of our Decision mailed August 31, 2015 (hereinafter "Decision" or "Dec."), which affirmed various final rejections of the claims made by the Examiner. We grant the Rehearing Request to the extent that we consider the Requester's arguments, but DENY the request to modify the Decision. A Rehearing Request under 37 C.F.R. § 41.52 has the very specific requirements that the appellant seeking rehearing allege that the Board misapprehended or overlooked something in rendering the original decision. Here, the Patent Owner has done neither, but mostly rehashes arguments already made and rejected. See Rhrg. Req. 1–5. We note that a majority of the Rehearing Request merely copies and pastes arguments already made before the Examiner or in the Appeal and which have already been addressed in the Decision. The Patent Owner states in its main argument, “[t]he Board has misinterpreted the definition of 'block-like' as described in the patent and previously argued by the Appellant.” Rhrg. Req. 2. Independent claim 1, however, recites a “support structure.” Claim 1 does not call the support structure a “block;” instead, the claim recites that the support structure is “block-like.” Ordinarily, the Board does not interpret claims so as to render words within the claim superfluous. This implies that some meaning must be attributed to the word “-like.” The implication of the word “-like” is that 2 The Patent Owner mistakenly references 37 C.F.R. §41.79, which deals with a rehearing in an inter partes reexamination, whereas this appeal is of an ex parte reexamination. Appeal 2015-006121 Reexamination Control 90/013,165 Patent US 7,513,711 B1 3 the support structure shares some feature or features with a block. Neither the claim language, nor the written description of the ʼ117 patent, nor the Patent Owner’s arguments, reasonably clarifies what such a feature or features might be. As such, the Board has not misinterpreted the phrase “block-like support structure” as the Patent Owner contends. (See Rhrg. Req. 2). We conclude that the phrase is not definite enough to reasonably interpret, as previously explained in the Decision. (See Decision 4–5). Likewise, the Board has not misapprehended any evidence provided by the Patent Owner (see Rhrg. Req. 5), which appears to consist primarily of intrinsic evidence in the written description, drawings, and claims of the ʼ711 patent itself (see App. Br. 7–9; Rhrg. Req. 2–4); but has considered such evidence and argument related thereto, found it unpersuasive, and provided an interpretation that is fully explained and supported in the original Decision. See Dec. 4–5. The Patent Owner simply cannot overcome the fact that the Specification describes a “block-like structure,” referring to the overall reef structure, and not a “block-like support structure” or frame as repeatedly argued and rejected. (See, e.g., ʼ117 patent, col. 1, ll. 37–40 and 49–54). Pages 4–5 of the Decision address the Patent Owner’s arguments invoking the written description of the ʼ117 patent, and, in particular, those arguments invoking either Figure 2 or the object stated generally at lines 44– 46 of column 1 (see App. Br. 7–8). Even to the extent that the ʼ117 patent, speaks of the base 22 and frame members 24 depicted in Figure 2, the patent describes these structures in terms of their capacity to act as support structure rather than in terms of any “block-like” features. (See, e.g., ʼ117 Appeal 2015-006121 Reexamination Control 90/013,165 Patent US 7,513,711 B1 4 patent, col. 3, ll. 20–22). As page 5 of the Decision points out, the Patent Owner’s argument that the components of the base 22 and the frame members 24 depicted in Figure 2 of the ʼ117 patent themselves comprise “block-like” elements (see App. Br. 8; Reply Br. 6–7) merely obscures an already unpersuasive argument. Even were we to agree with the Patent Owner’s assertion that the dictionary definition quoted by the Examiner on page 4 of the Final Office Action is not “all-inclusive” (see Reply Br. 5–6), the scope and meaning of the phrase “block-like support structure” is not clear enough to satisfy the second paragraph of 35 U.S.C. § 112. The Patent Owner’s arguments amount to nothing more than a disagreement over the interpretation applied by the Board. A Rehearing Request is not an opportunity for the requesting party to reargue its case or to express disagreement with the Decision. Accordingly, we are not persuaded of any basis for granting the Rehearing Request. DECISION While we have considered the Decision in light of the Rehearing Request, we decline to modify it in any respect. Pursuant to 35 U.S.C. §§ 141(b) and 306, this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 et seq. DENIED Appeal 2015-006121 Reexamination Control 90/013,165 Patent US 7,513,711 B1 5 Mark Terry, Esq. 801 Brickell Ave. Suite 900 Miami, FL, 33131