Ex Parte 7914167 et al

Patent Trial and Appeal BoardAug 22, 2017

90013550 (P.T.A.B. Aug. 22, 2017)

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. 90/013,550 08/12/2015 7914167 KWK-04380/03 1839 32692 7590 08/22/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER HOTALING, JOHN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/22/2017 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 JOHN G. PETERSEN ____________________ Appeal 2017-005700 Reexamination Control No. 90/013,550 Patent US 7,914,167 B2 Technology Center 3900 ____________________ Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Patent Owner requests rehearing of our Decision entered April 27, 2017 (“Decision”), in which we affirmed the rejection of claims 21–37 and 39.1 OPINION We will maintain the rejections. PRINCIPLES OF LAW A request for rehearing is limited to matters overlooked or 1 Claims 1–9, 11, 13–20, and 38 stand confirmed. Claims 10, 12, and 40 have been cancelled. Appeal 2017-005700 Application 90/013,550 Patent US 7,914,167 B2 2 misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by paragraphs (a)(2) though (a)(4). Id. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS CLAIM 22 Appellant argues that the Board misapprehended the limitations of claim 22 in affirming the Examiner’s § 103(a) rejection over List, Matechuk, and Hall. Req. for Reh’g 2. Appellant asserts that claim 22 requires the source of illumination to be “in close proximity and at a fixed height relative to the major surface,” and that parent claim 21 requires that “a rotary portion” defines the “major surface.” See Req. for Reh’g 2. In Appellant’s view, List’s failure to disclose a housing assembly that includes a rotary portion means that List cannot disclose a relationship (i.e., “fixed height”) between the height of an illumination source and a major surface of a rotary portion of a housing assembly of a sanding apparatus. See Req. for Reh’g 3. Appellant’s argument is not persuasive, because Appellant does not refute the Examiner’s proffered combination of references. In the Decision, we agreed with the Examiner that List teaches a source of illumination in Appeal 2017-005700 Application 90/013,550 Patent US 7,914,167 B2 3 close proximity at a fixed height relative to the major surface. Figure 1 of List is reproduced below: Figure 1 is a side view of the sanding, scraping, and polishing machine of List. List includes a low voltage lamp (circled in the upper right of the figure), illuminating the floor in front of the machine.2 List col. 4:18– 19. The Examiner concedes that List does not specifically disclose a rotary portion that rotates a major surface to be connected to a surface sanding article. Ans. 4. The Examiner then relied on Matechuk’s teaching of a rotary portion defining a major surface to be connected to a surface sanding article. Ans. 4–5. The Examiner does not propose to bodily incorporate all of the components of Matechuk into List. Matechuk is cited by the Examiner for its teaching of a rotary portion that defines a major surface. Ans. 4. The Examiner concludes, and we agree, that it would have been obvious to modify the sander of List in view of the teachings of Matechuk regarding a rotary portion, because the combination would have 2 List makes reference to element number 21 in the patent text, but Figure 1 does not include a reference numeral for the lamp. Appeal 2017-005700 Application 90/013,550 Patent US 7,914,167 B2 4 provided light placement (as taught by List) that “provides illumination to the surface to be worked.” Ans. 5. Because the Examiner relies on Matechuk for its disclosure of a rotary portion, it is not an effective attack on the Examiner’s combination to argue that List does not disclose a rotary portion. We agree with the Examiner’s conclusion that the combination of List, Matechuk, and Hall would have suggested a source of illumination in close proximity to and at a fixed height relative to a rotary portion defining a major surface, as claim 22 requires. Appellant’s further argument that because Matechuk’s shroud is disclosed as being free to slide up and down relative to the rotary portion of Matechuk’s apparatus, a light mounted on Matechuk’s shroud would not be at a fixed height relative to the major surface of the rotary portion, is not persuasive to show that the Board misapprehended the rejection. The Examiner does not propose the bodily incorporation of Matechuk’s shroud structure into List. See Req. for Reh’g 4; Ans. 5. As stated supra, the Examiner merely relies on Matechuk for its disclosure of a rotary portion that defines a major surface. The Examiner’s proposed combination of references merely modifies List such to include a rotary, rather than stationary, portion that defines a major surface. We, therefore, conclude that Appellant has not shown any points which we misapprehended or overlooked in our Decision. CONCLUSION We have granted Appellant’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of claim 22, but Appeal 2017-005700 Application 90/013,550 Patent US 7,914,167 B2 5 we decline to modify our decision in any way. We maintain the rejection of claims 21–37 and 39. Pursuant to 37 C.F.R. § 41.79(d), 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 and 1.983. REHEARING DENIED rwk For PATENT OWNER: 3M Innovative Properties Company P.O. Box 33427 St. Paul, MN 55133-3427 For THIRD PARTY REQUESTER: DINSMORE & SHOHL LLP P.O. Box 7021 Troy, MI 48007-7021 2nd Third Party Address - Name change not of record GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, PC PO BOX 7021 TROY, MI 48007-7021