Ex Parte Burns et al

Patent Trial and Appeal BoardMay 5, 2017

13066579 (P.T.A.B. May. 5, 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. 13/066,579 04/18/2011 Martin P. Burns 9756 7590 05/08/2017 Francis C. Hand, Esq., c/o Carella, Byrne, Cecchi, Olstein, Brody & Agnello 5 Becker Farm Road Roseland, NJ 07068 EXAMINER STERLING, AMY JO ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 05/08/2017 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 MARTIN P. BURNS and STANLEY SZPRENGIEL ____________ Appeal 2014-008193 Application 13/066,579 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, SHEILA F. McSHANE, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE The Appellants filed a Request for Rehearing (“Request”), dated April 17, 2017, seeking reconsideration under 37 C.F.R. § 41.52 of our Decision on Appeal entered March 15, 2017 (“Decision”), in which we affirmed the Examiner’s rejections of claims 1, 2, 5, 6, 8, 9, 11, 14, 15, 17–21, and 25 under 35 U.S.C. §§ 102, 103, and reversed the Examiner’s rejections of claim 3, 4, 10, 12, 16, 22, 23, and 26 under 35 U.S.C. § 103 and of claim 24 under 35 U.S.C. § 112. We have jurisdiction over the Request under 35 U.S.C. § 6(b). Appeal 2014-008193 Application 13/066,579 2 DISCUSSION We note at the outset that a Request for Rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief, filed April 28, 2014 (“Appeal Brief”), or in the Reply Brief, filed June 26, 2014 (“Reply Brief”). Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id. To the extent the Appellants present supplemental or new arguments in the Request, those arguments are untimely and, as such, will not be considered except where the arguments are based on a recent relevant decision of either this Board or a federal court, or on an allegation that the Board’s decision contains an undesignated new ground of rejection. See id. Turning to the Request, the Appellants first allege that the Decision “overlooks the fact that the Amendment filed October 28, 2013 [“Amendment”] was entered not only as a matter of right but also because the Examiner responded to the amendment in the Office Action of November 21, 2013.” Request 1; see also id. at 2. The Board noted, in the Decision, that the Examiner did not indicate whether the Amendment was entered, but, however, considered that it had been entered in reversing the rejections of claim 24 under 35 U.S.C. § 112. See Decision 4. The Board also further considered that the Amendment had been entered in finding that the amendment added, but did not describe, i.e., implicitly or explicitly Appeal 2014-008193 Application 13/066,579 3 define, the phrase “entirely circumferentially disposed within,” in sustaining the rejection of claim 24 under 35 U.S.C. § 102. Id. at 7. Thus, we are not persuaded that the Board overlooked the Amendment in rendering our Decision. The Appellants also allege that “the Board erred as a matter of law since Appellant’s Specification provides a definition of the terms ‘entirely circumferentially’ that distinguishes from the metallic member 12 partially positioned within the member 10 of Mormon.” Request 1–2. The Appellants’ argument in the Request recites language from the Specification and contends that the Specification defines the term at page 4 and Figure 1. See id. at 2–6. However, these arguments were not presented in the Appeal or Reply Briefs, and are thus, considered untimely and unpermitted. To the extent these arguments are not newly presented in the Request, they repeat the argument presented on pages 10 through 11 of the Appeal Brief. To this extent, this argument was neither misapprehended nor overlooked, because the Board considered the Appellants’ arguments regarding claim 24’s recitation of “entirely circumferentially” as presented in the Appeal Brief, including considering the Specification, in finding that the Examiner’s interpretation was supported. See Decision 7. The Appellants finally allege that “the Board overlooks the requirements for a prima facie case of obviousness.” Request 2. Specifically, the Appellants argue that the Final Rejection did not “provide any reason for rejecting claim 11 as being unpatentable over Mormon in view of Liang.” Id. at 7. This argument was presented in the Appeal Brief at page 18 and was considered by the Board. Decision 9–11. Appeal 2014-008193 Application 13/066,579 4 The Appellants’ further argument that “[t]he Examiner's Answer does not provide any articulated reasoning with some rational underpinning for rejecting claims 11 and 15 as being unpatentable over Mormon” (Request 7) is a new argument that is not timely presented and thus unpermitted. The Appellants chose not to present any arguments responding to the Examiner’s Answer. See Reply Brief. The Board considered the Examiner’s rejection of claims 11 and 15 in light of the arguments presented by the Appellants in the Appeal Brief. Decision 9–11. We further find unpersuasive the Appellants’ argument that the Board erred by stating that the Appellants do not argue the Examiner’s reasoning with respect to claim 15. Request 8. The Appellants argued, in the Appeal Brief at page 14, that the “Examiner has provided no evidence to support his proposition that the metallic member 12 of Morman has a resiliency to limit the total compression” and, in support thereof, discussed inherency. The Board considered the argument at pages 9–11 and noted that the Appellants argued against the underlying finding of resiliency to limit the compression, but did not argue against the Examiner’s articulated reasoning that “‘the material selected would be used together for the purpose of [dampening vibration].’” Decision 10. We are not persuaded that we misapprehended or overlooked any arguments presented in the Appeal Brief in rendering our Decision. However, we agree with the Appellants that claim 27 had not been rejected in the Examiner’s Final Action. Request 8. Because the Examiner did not reject claim 27, the Board modifies the Decision to pertain to claims 1–6 and 8–26, with claims 7 and 27 not before the Board on appeal. Appeal 2014-008193 Application 13/066,579 5 DECISION The Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the Appellants’ Request. We have modified our decision as it relates to claim 27. The Request is denied in all substantive respects. DENIED