Ex Parte Gilad et al

Patent Trial and Appeal BoardMay 22, 2013

11528627 (P.T.A.B. May. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ZVIKA GILAD and YANIV BIRNBOIM ____________________ Appeal 2012-010087 Application 11/528,627 Technology Center 2400 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-010087 Application 11/528,627 2 I. STATEMENT OF THE CASE Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) on April 25, 2013, for reconsideration of our Decision mailed February 27, 2013 (hereinafter “Decision”) with respect to claims 1-5, 7-18, 20, and 21 (Request 1). The Decision affirmed the Examiner’s rejections of: (1) claims 1, 2, 7, and 8 under 35 U.S.C. § 103(a) as being unpatentable over Iddan in view of Horn; (2) claims 3, 4, 5, and 11-13 under 35 U.S.C. § 103(a) as being unpatentable over Iddan in view of Horn and Mizuno; (3) claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Iddan in view of Horn and Swain; (4) claims 14 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Swain in view of Iddan and Horn; (5) claims 16, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Swain in view of Iddan, Horn, and Mizuno; and (6) claims 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Swain in view of Iddan, Horn, and Gat (Decision 10). We have reconsidered our Decision of February 27, 2013 regarding claims 1-5, 7-18, 20, and 21, in light of Appellants’ arguments in the Request, and we find Appellants have not identified any points misapprehended or overlooked by the Board in our Decision therein. We decline to change our Decision for the reasons discussed infra. Appeal 2012-010087 Application 11/528,627 3 II. ISSUES We address the following contentions raised by Appellants in the Request: 1. Appellants contend that “[t]he Board [o]verlooked Appellants’ [a]rguments [r]egarding … ‘[n]on-[s]traight centerline’” in that “neither the Examiner nor the Board has construed the phrase ‘peanut shape’, and Horn does not provide any further explanation for this shape” (Request 2). In particular, Appellants contend that “Appellants provided a definition of the phrase ‘peanut shape’, but that definition was neither acknowledged nor disputed by the Board” (id.). According to Appellants, “the Board failed to rebut or acknowledge … evidence” provided by Appellants “as to what shape a person having ordinary skill in the art would think of with respect to the phrase ‘peanut shape’” (id.). 2. Appellants also contend that “the Board provided little to no claim construction analysis, and additionally failed to acknowledge Appellants’ arguments as to why Horn fails to even suggest a ‘non-straight centerline’” (Request 3). In particular, Appellants argue that “none of Appellants’ arguments made in the Reply Brief were acknowledged or rebutted by the Board” (id.). 3. Appellants further contend that “[t]he Board’s [d]ecision is [c]onclusory, [i]nadequate and [i]mproper” because “the Board cannot simply affirm conclusory statements made by the Examiner with its own conclusory statements and without providing a rational basis as to why the Examiner did not err” (Request 4). Appeal 2012-010087 Application 11/528,627 4 Accordingly, the issue we address on this Request is whether Appellants have identified that the Board has misapplied the relevant law or misapprehended Horn’s disclosure of a “peanut shape” by finding that Horn teaches “a housing having a non-straight centerline, the centerline having a radius of curvature” as recited in claim 1 and similarly recited in claims. Additionally, we also address on this Request whether the Board failed to acknowledge Appellants’ argument in Appellants’ Appeal Brief or Reply Brief . III. ANALYSIS As to Appellants’ contention 1, although Appellants contend that that “[t]he Board [o]verlooked Appellants’ [a]rguments [r]egarding ‘[p]eanut [s]hape and ‘[n]on-[s]traight centerline’” in that we did not address the Examiner’s finding that a “peanut shape” solely comprises a peanut excluding its shell or acknowledge Appellants’ “definition of the phrase ‘peanut shape’” (Request 2), such argument is not commensurate in scope with the recited language of claim 1 because the claim does not require a peanut, including or excluding its shell. That is, claim 1 merely requires a housing “having a non-straight centerline,” wherein “non-straight centerline” is not defined in the claim. Thus, claim 1 does not preclude a peanut, excluding its shell that comprises any line oriented with the center that is not straight. . Appeal 2012-010087 Application 11/528,627 5 We note that although Appellants assert that “the shape of a peanut shell is elongated and linear with two bulbous ends defined by a pinched midsection” (App. Br. 6), it is by Appellants’ own admission that a “genetic variation may sometimes produce a peanut having a non-linear centerline” (id.). Further, although Appellants contend that “a Google Image search for ‘peanut shape’ yields a plethora of results depicting various objects, all of which have this traditional peanut shell shape” “yield[ing] images of objects depicting the shell of the peanut alone” (App. Br. 6), a search for images corresponding to “peanut shape” yields images of peanuts with the shell and without the shell; wherein, both the peanut shell housing the peanuts and the peanut have linear and non-linear centerlines In particular, peanuts do not always have a “straight shape” or a linear centerline as Appellants assert (App. Br. 7). Further, contrary to Appellants contention that the Board overlooked the arguments regarding a “non-straight centerline” (Request 2), the Board clearly set forth an analysis of Appellants’ arguments and the Examiner’s findings with regards to a “housing having a non-straight centerline, the centerline having a radius of curvature” (Decision 5-6). As to Appellants’ contention 2, contrary to Appellants’ contention that the Board provided little to no claim construction analysis, the Board clearly set forth a sufficient claim construction analysis (Decision 5-6). In particular, according to the claim interpretation as set forth in the Decision, we gave the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2012-010087 Application 11/528,627 6 However, we did not read limitations from the Specification or any other reference into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). That is, we gave “‘a housing having a non-straight centerline, the centerline having a radius of curvature’ its broadest reasonable interpretation as a housing having a curved centerline” (Decision 6). As to Appellants’ argument that we did not address Appellants’ arguments presented in the Reply Brief (Request 3), we note that Appeallants merely repeat the same arguments presented in the Appeal Brief that the applied references fail to disclose “a housing having a non-straight centerline, the centerline having a radius of curvature” (claim 1) as recited in the claims (Reply Brief 1-4). That is, the Board addressed these duplicated arguments when it addressed Appellants’ arguments presented in the Appeal Brief. As to Appellants’ contention 3, as set forth in our Decision, contrary to Appellants’ contention that the Board did not “provid[e] a rational basis as to why the Examiner did not err” (Request 4), we did indeed consider all claimed features, provide a rational basis for disclosure of these claimed features, and found no error in the Examiner’s finding of obviousness over Iddan in view of Horn (Decision 5-6). Thus, we do not agree that we misapplied the relevant law and misapprehended the teachings of the references or Appellants’ argument by finding that Horn teaches “a housing having a non-straight centerline, the centerline having a radius of curvature.” Accordingly, Appellants’ Request Appeal 2012-010087 Application 11/528,627 7 does not persuade us to modify our Decision. Therefore, we find Appellants’ arguments unavailing. IV. CONCLUSION We have carefully considered the arguments raised by Appellants in the Request for Rehearing, but none of these arguments are persuasive that our original Decision was in error. We are still of the view that the invention set forth in claims 1-5, 7-18, 20, and 21 is unpatentable over the applied prior art based on the record before us in the original appeal. This Decision on Appellants’ Request for Rehearing is deemed to incorporate our earlier Decision (mailed February 27, 2013) by reference. See 37 C.F.R. § 41.52(a)(1). V. DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision of February 27, 2013, but we deny the request with respect to making any changes therein. REHEARING DENIED tkl