Ex Parte Montgomery et al

Patent Trial and Appeal BoardFeb 14, 2018

14128427 (P.T.A.B. Feb. 14, 2018)

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. 14/128,427 12/20/2013 Brian C. Montgomery H29504-HON10513P00401US 6115 93730 7590 03/02/2018 HONEYWELL/WOOD PHILLIPS Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER CHIN-SHUE, ALVIN CONSTANTINE ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 03/02/2018 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): ksanderson@woodphillips.com patentservices-us @ honey well, com docketing @ woodphillips .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN C. MONTGOMERY, JUSTIN SHANE PATTON, and PRESTON L. ANDERSON Appeal 2017-001914 Application 14/128,427 Technology Center 3600 Before JOSEPH L. DIXON, LARRY J. HUME, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants seek rehearing of the September 29, 2017 Decision on Appeal (the “Decision”), wherein we affirmed the rejections of claims 1-12, 16, and 18-24, and reversed the rejection of claim 13. We have reconsidered the Decision in light of Appellants’ November 29, 2017 Request for Rehearing (the “Request”), but are not persuaded any points were misapprehended or overlooked. See 37 C.F.R. § 41.52. Appeal 2017-001914 Application 14/128,427 ANALYSIS Appellants’ argument is that “[bjecause all of the § 103 rejections of the claims based upon Copin and Lara depend upon the Examiner’s naked assertion of ‘design choice,’ all of the § 103 rejections of the claims based upon Copin and Lara are improper and should all be reversed by this Board.” (Request 5.) In particular, Appellants assert “[i]t is completely improper for the Examiner and the Board to place a burden on the Appellants to argue or show evidence of ‘a new or unexpected result’ absent a proper” prima facie case of obviousness” because “[t]he Examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness” and “[i]f the Examiner does not produce a factually supported prima facie case, the Applicant is under no obligation to submit evidence of nonobviousness.” {Id. at 5.) We are not persuaded by Appellants’ argument because we find the Examiner did establish a prima facie case of obviousness.1 Specifically, the Examiner found the references to teach the structural limitations of the claims, and found sufficient rationale for the modification in that “the claimed ratio and the height of the intermediate member are merely a matter of design choice,” because they would “not [be] expected to produce any 1 The Federal Circuit has held “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). This burden is met by “adequately explaining] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Id. at 1370. It is only “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection” that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. § 132. See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). 2 Appeal 2017-001914 Application 14/128,427 new or unexpected result or that which cannot be determined through routine experiment and optimization.” (Ans. 8 (Copin); see id. at 9-10 (Lara).) The claimed ratio being less than one means that the “change in effective length of the lifeline” is less than the “change in height.” Appellants are not arguing the references do not include a change in effective length of the lifeline, nor are they arguing the references do not include a change in height. The cited art thus includes a change in effective length/change in height “ratio,” and the question is whether it would have been obvious to select the two dimensions such that the former is less than the latter. We conclude that the Examiner’s reliance on design choice or optimization regarding the recited ratio, which is simply the proportional relationship between the two lengths, was appropriate in this instance. See MPEP § 2144 (explaining that “Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported); MPEP § 2144.04 (providing examples of rationales that have been found sufficient in the courts, including “Changes in Size/Proportion”). The Examiner having established prima facie obviousness, it was incumbent upon Appellants to show the criticality of the particular claimed ratio,2 which they did not attempt to do (see App. Br. 4-5, 7-8; Reply Br. 4- 5), and our own review of the Specification does not identify anything particularly advantageous or unexpected about a ratio that is less than one.3 2 See MPEP § 2114(111) (explaining that “it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection” if “the applicant has demonstrated the criticality of a specific limitation”). 3 See, e.g., Spec. ^ 104 (stating that “[i]n a number of embodiments hereof, the ratio ... is less than 1.0, less than 0.5 or even less than 0.4” and that “[i]n the case currently available tipping post systems, the ratio ... is greater 3 Appeal 2017-001914 Application 14/128,427 Appellants additionally argue that the pivoting members in Copin and Lara “cannot produce the ratio recited in the rejected claims, regardless of changes in size, shape, or making something integral.” (Request 4, citing App. Br. 7-9.) Although Appellants might have overcome the obviousness case with this type of argument, we are not persuaded they have done so in the record before us, because they do not adequately explain, much less provide evidence showing, why or how a pivoting member could not produce the claimed ratio. “Attorney’s argument in a brief cannot take the place of evidence.” See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For these reasons, we are not persuaded we overlooked or misapprehended anything in the Decision. DECISION We grant Appellants’ Request to the extent we have reconsidered our Decision, but we deny that request with respect to making any modification thereto. Our Decision is final for purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED than 1.0,” but not explaining why or how a given ratio is better than any other). 4