Ex Parte Carr

Patent Trial and Appeal Board

Nov 3, 2017

13528111 (P.T.A.B. Nov. 3, 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.
13/528,111 06/20/2012 Alesa J. Carr 0606.1001 9353
49455 7590
STEIN IP, LLC
1990 M STREET, NW
SUITE 610
WASHINGTON, DC 20036
EXAMINER
PATEL, TARLA R
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
01/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALESA J. CARR
Appeal 2016-001783
Application 13/528,111
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Alesa J. Carr (“Appellant”) filed a Request for Rehearing (“Request”)
of the Decision on Appeal dated November 7, 2017 (“Decision”) in this
Application. The Request seeks reconsideration of the Board’s affirmance
of the rejection of claims 1—7.
Appeal 2016-001783
Application 13/528,111
DECISION
The Request seeks rehearing for two reasons. First, Appellant
contends that the affirmance of the rejection of claims 1—3 and 5—7 under
35 U.S.C. § 103(a) is based on an undesignated new ground of rejection.
Request 1. Second, Appellant contends that the rejection of claim 4 is not
supported by articulated reasoning. Id. We analyze each reason separately.
Undesignated New Ground of Rejection
A request for rehearing may contain “arguments that the Board’s
decision contains an undesignated new ground of rejection.” 37 C.F.R.
§ 41.52(a)(4). Appellant contends that the following statements in the
Decision constitute an undesignated new ground of rejection:
1. “We agree with the Examiner that Appellant does not provide any
persuasive evidence or technical reasoning that established]
structural or functional differences between the condoms recited in
claims 1—3 and the condoms disclosed in Shubin.”
2. “We note, however, that ornamental features, such as color, cannot
be relied on for patentability. See In Seid.”
Request 3^4 (quoting Decision 4—5).
According to Appellant, these statements constitute an undesignated
new ground of rejection because the statements “are new to this prosecution”
and supply “the rationale for the Examiner’s position, i.e., the subject matter
relied on by Appellant could be ignored as it was ‘ornamental’ and not
functional.” Id. at 4. In support of this argument, Appellant relies on In re
Biedermann, 733 F. 3d 329 (Fed. Cir. 2013). Id.
We are mindful that the Board may not rely on “new facts and
rationales not previously raised to the applicant by the Examiner” where
“such facts change[s] the thrust of the rejection.” In re Leitham, 661 F.3d
1316, 1319 (Fed. Cir. 2011). However, “[a] new ground of rejection . . . will
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Application 13/528,111
not be found based on the Board ‘further explaining] the examiner’s
rejection’ or the Board’s thoroughness in responding to an applicant’s
argument.” Biedermann, 733 F.3d at 337, citing In re Jung, 637 F.3d 1356,
64—65 (Fed. Cir. 2011). In Biederman, the Federal Circuit held that the
Board’s decision changed the thrust of the Examiner’s rejection “when the
Board found a new factual basis for the reason to combine” and “went
beyond filing in gaps in the examiner’s reasoning because it is not clear that
the examiner’s reasoning survived in the Board’s rejection.” Biederman,
733 F.3d at 337.
In the Decision, however, the Board did not find new facts or alter the
Examiner’s reasoning. Compare Decision 4—5 with Final Act. 4—5.
Appellant contended in the Appeal Brief that the Examiner did not make out
aprima facie case. Appeal Br. 13. However, the only argument presented
to support that contention is that “skin tones” of the condoms recited in the
claims essentially are a subset of the color of human flesh disclosed in
Shubin. For example, Appellant argued that
Rejected claim 1 recites a condom where a ‘skin tone is selected from
the skin tones illustrated in Fig. 1.’ Clearly the claim is more specific
than the reference. The reference discloses a condom of the color of
human flesh. The claim is limited to a specific set of skin tones, i.e.,
only those which are illustrated; it follows the claim is more specific
than the disclosure of the reference.
Appeal Br. 14; see also id. at 16, 20; Reply Br. 6
Further, Appellant did not argue that the recited skin tones provide a
function. Appeal Br. passim. Therefore, our agreement with the Examiner
that Appellant did not establish structural or functional or differences
between the recited condoms and those disclosed in Shubin did not introduce
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Application 13/528,111
something new to the prosecution. See Final Act. 4—5; Ans. 6. Our
reference to In re Seid and use of the word “ornamental” as an adjective
preceding the word “appearance” is not a new finding in regard to Shubin or
a change in the Examiner’s reasoning that changes the thrust of the rejection.
Rather, we further explained the Examiner’s rejection in the context of
responding to Appellant’s argument that the “skin tone appearance” of the
recited condoms patentably distinguish from Shubin’s human flesh color
condoms.
The Rejection of Claim 4
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)(1). However, “Arguments not raised ... are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section.” Id.
Appellant argues in the Request that “[t]he reasoning required by KSR
to justify a rejection based on these facts is simply missing.” Request 6.
Appellant’s argument in the Appeal Brief with respect to claim 4 was that
Lee teaches away from the claimed invention. See Appeal Br. 17—19.
Appellant’s teaching away argument was addressed in the Decision.
Decision 6. As Appellant did not raise the new “reasoning” argument in the
Appeal Brief and this argument does not otherwise fall within any of
provisions set forth in paragraphs (a)(2) through (a)(4) of 37 C.F.R. § 41.52,
it is not appropriately raised in a rehearing request. See Ex parte Frye, 94
USPQ2d 1072, 1076 (BPAI) (precedential) (holding that the Board reviews
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Application 13/528,111
a rejection for error “based upon the issues identified by appellant, and in
light of the arguments and evidence produced thereon”).
For the foregoing reasons, the Request is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REQUEST DENIED
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