Ex Parte Duppert et al

Patent Trial and Appeal Board

Apr 22, 2016

13428337 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/428,337 03/23/2012
53609 7590 04/26/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Ronald J. Duppert
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
508925 8137
EXAMINER
HERRMANN, JOSEPH S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD J. DUPPERT and XIANGHONG WANG
Appeal2016-002288
Application 13/428,337
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and MARK A. GEIER,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Ronald J. Duppert and Xianghong Wang (Appellants) filed a request
for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request"), dated April 7,
2016, of our decision mailed February 29, 2016 (hereinafter "Decision"). In
the Decision, we affirmed the Examiner's rejections of claims 6, 7, 10, 16,
and 19, reversed the Examiner's rejection of claims 2-5, 9, and 18, and
entered a new ground of rejection of claim 2 pursuant to our authority under
37 C.F.R. § 41.50(b).
Appeal2016-002288
Application 13/428,337
DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 3 7
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arguments originally made in the Brief, neither is it an opportunity to merely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.
Regarding claim 6, Appellants allege "that the Board has
misinterpreted Appellants' argument, and in so doing, drawn a conclusion
inconsistent with the facts of this case." Request 2. In support of this
allegation, Appellants contend that the Specification defines "pilot ring" and
that the Examiner did not use this definition in construing claim 6. See id. at
2-3 (citing Spec. i-f 69).
Paragraph 69 states:
Generally, scroll compressors with movable and fixed
scroll compressor bodies require some type of restraint for the
fixed scroll compressor body 110 which restricts the radial
movement and rotational movement but which allows some
degree of axial movement so that the fixed and movable scroll
compressor bodies 110, 112 are not damaged during operation of
the scroll compressor 14. In embodiments of the invention, that
restraint is provided by a pilot ring 160, as shown in FIGS. 5-9.
FIG. 5 shows the top side of pilot ring 160, constructed in
accordance with an embodiment of the invention. The pilot ring
160 has a top surface 16 7, a cylindrical outer perimeter surface
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Appeal2016-002288
Application 13/428,337
178, and a cylindrical first inner wall 169. The pilot ring 160 of
FIG. 5 includes four holes 161 through which fasteners, such as
threaded bolts, may be inserted to allow for attachment of the
pilot ring 160 to the crankcase 42. In a particular embodiment,
the pilot ring 160 has axially-raised portions 171 (also referred
to as mounting bosses) where the holes 161 are located. One of
skill in the art will recognize that alternate embodiments of the
pilot ring 160 may have greater or fewer than four holes for
fasteners. The pilot ring 160 may be a machined metal casting,
or, in alternate embodiments, a machined component of iron,
steel, aluminum, or some other similarly suitable material.
Spec. i-f 69 (emphasis added). The Specification does not define the claim
term "pilot ring" in paragraph 69. Rather, the Specification describes a
restraint which is embodied as a pilot ring. Our reviewing Court has
instructed us that we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Furthermore, in the
absence of an explicit definition of "pilot ring" in the Specification, the
Examiner does not err in using the ordinary and customary meaning of this
term.
Moreover, as explained in the Decision, and admitted by Appellants
(Request 2), claim 6 does not require a pilot ring. Rather, claim 6 requires
"a bearing member adapted to retain the drive shaft and configured for
attachment to a pilot ring." Appeal Br., Claims App. 2. Appellants do not
explain why Clendenin's bearing member 24 is not "configured for
attachment to a pilot ring," and thus do not apprise us of either Examiner
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Appeal2016-002288
Application 13/428,337
error in rejecting claim 6 or Board error in sustaining the rejection of claim
6.1
Appellants further contend "that the Board did not properly consider
Appellants' arguments with respect to whether Clendenin incorporates by
reference the claimed bearing member configured for attachment to a pilot
ring from the Caillat reference." Request 4. In support of this contention,
Appellants argue that "[ t ]he passage cited from Clendenin does not state
with any detailed particularity that it incorporates the asserted pilot ring of
Caillat." Id. at 5.
In the Appeal Brief, Appellants did not present arguments that
Clendenin did not properly incorporate Caillat by reference. See Appeal Br.
12. Rather, in the Appeal Brief, Appellants argued that Clendenin itself did
not disclose a pilot ring. Id. We cannot overlook or misapprehend an
argument that was not raised.
Turning to the new rejection of claim 2, "Appellants submit that the
Board has misapprehended the cited limitations of claim 2. The claimed
cylindrical shell section refers to the compressor housing, not the bearing
member. FIG. 3 of Clendenin does not show the compressor housing at all,
and thus cannot support the Board's assertion." Request 6.
Appellants are correct. In rejecting claim 2, we confused the claimed
cylindrical shell section with the claimed cylinder sections. We withdraw
the rejection of claim 2 as anticipated by Clendenin.
1 On page 3 of the Request Appellants refer to the rejection of claim 16 as
also being in error for the same reasons discussed with respect to claim 6.
Claim 16 also does not recite a pilot ring. Appeal Br. 4. Thus, Appellants
do not apprise us of Examiner or Board error with respect to the rejection of
claim 16 either.
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Appeal2016-002288
Application 13/428,337
DECISION AND ORDER
We grant the Request to the extent that we have considered the
arguments pertaining to matters allegedly overlooked or misapprehended,
and withdraw the rejection of claim 2, but otherwise deny the Request.
DENIED
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