Ex Parte Grove-Nielsen

Patent Trial and Appeal BoardDec 30, 2016

13765781 (P.T.A.B. Dec. 30, 2016)

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. 13/765,781 02/13/2013 Erik Grove-Nielsen 2011P23749US 1075 22116 7590 01/04/2017 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 EXAMINER DANIELS, MATTHEW J Orlando, EL 32817 ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): IPDadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK GROVE-NIELSEN Appeal 2015-005519 Application 13/765,781 Technology Center 1700 Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON REHEARING The Appellant requests rehearing of a DECISION ON APPEAL dated September 16, 2016 (“Decision”), affirming the Examiner’s decision to reject claims 1—15, which are all of the pending claims. A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs are not permitted in a request for rehearing except as provided in 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2016). For the reasons set forth below, the request is DENIED. Appeal 2015-005519 Application 13/765,781 I. In the Decision, the Board stated: In the rejection on appeal, the Examiner merely replaces the thread of Engdahl with the hollow monofilament disclosed in Wilson. The Appellant does not direct us to any evidence showing that the hollow monofilament disclosed in Wilson would not be capable of dissolving during the resin curing stage in Engdahl’s method. Decision 4—5 (emphasis added). On rehearing, the Appellant “disagrees that no evidence was provided.” Request 2. According to the Appellant, evidence has been “repeatedly provided” showing that Wilson’s monofilament dissolves in a post-cure and not in a curing stage [as disclosed in Engdahl].” Request 2. For example, the Appellant argues that in Wilson’s method, “the dissolving liquid acts on the monofilament after the surface of the laminate/fibers have been abraded, which is a post cure activity.” Request 3. Based on that evidence, the Appellant argues “[t]here would be no reason [to] expect the hollow monofilament of Wilson, which does not dissolve in the resin as part of a curing[,] to dissolve in a pre-cure method of Engdahl.” Request 3. Significantly, the Appellant has not shown that the conditions in Wilson’s method are substantially the same as the conditions in Engdahl’s method. Thus, it is of no moment in the § 103(a) rejection on appeal1 that the hollow monofilament disclosed in Wilson does not dissolve during a resin curing stage under the 1 Independent claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Engdahl in view of Wilson. The Examiner finds, and the Appellant does not dispute, that the only difference between the method recited in claim 1 and the method disclosed in Engdahl is that “‘Engdahl is silent to the thread or yam comprising hollow fibers.’” Decision 4 (quoting Ans. 2). 2 Appeal 2015-005519 Application 13/765,781 conditions disclosed in Wilson. To rebut the prima facie case of obviousness, the Appellant must show that Wilson’s hollow monofilament would not dissolve during the resin curing stage under the conditions disclosed in Engdahl. That is, on this record, the Examiner found, and the Appellant did not dispute, that the hollow monofilament disclosed in Wilson is comprised of the same material as the thread disclosed in Engdahl and is used in a similar application. See Decision 4; Ans. 2—3; see also Engdahl, col. 5,11. 18—21 (suitable resins for the thread include polyamides, styrene plastics, acrylonitrile polymers, and polyesters); Wilson, col. 15,11. 17—20, 28—41 (suitable dissoluble polymers for the monofilaments include polyamide, polystyrene, polyacrylonitrile, and polyester). Thus, the burden properly shifted to the Appellant to show that the hollow monofilament disclosed in Wilson would not dissolve during the resin curing stage in Engdahl’s method. On rehearing, the Appellant has failed to show that the Board misapprehended or overlooked any point demonstrating that the Appellant satisfied that burden. II. The Appellant’s request for rehearing has been granted to the extent that the DECISION ON APPEAL dated September 16, 2016, has been reconsidered in light of the Appellant’s arguments. However, the request is denied because we decline to modify the decision in any respect. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED 3