Ex Parte Ramsey

Patent Trials and Appeals BoardSep 11, 2014

11891168 - (R) (P.T.A.B. Sep. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BOYD J. RAMSEY ____________________ Appeal 2012-006000 Application 11/891,168 Technology Center 3600 ____________________ Before LYNNE H. BROWNE, JILL D. HILL, and TIMOTHY J. GOODSON, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Boyd J. Ramsey (Appellant) filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52 on August 13, 2014. The Request for Rehearing seeks reconsideration of our Decision (“Dec.”) mailed on June 13, 2014, in which we affirmed the Examiner’s rejection of claims 1–16 and 23 under 35 U.S.C. §103(a) as being unpatentable over Heathcott (U.S. Patent App. Pub. No. 2007/0104543 A1, published May 10, 2007) in view of Davison (U.S. Patent No. 3,629,047, issued Dec. 21, 1971). For the reasons discussed below, we grant the request to the extent that we have reconsidered our decision, but we deny the request to the extent that it seeks modification of our Decision. Appeal 2012-006000 Application 11/891,168 2 OPINION 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). Arguments not raised in the briefs before the Patent Trial and Appeal Board (“Board”) and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. Id.; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential). Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. 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. We will consider the Request’s criticisms of the Decision as points Appellant believes to have been misapprehended or overlooked. We address Appellant’s arguments in the order they are presented in the Request. First, Appellant argues that Davison is not analogous art because it has uses and functions that are unrelated to Appellant’s invention. Req. Reh’g 2. Here, the Request repeats the same argument, and quotes the same excerpts from Davison, as in Appellant’s earlier briefing. See App. Br. 7. We did not misapprehend or overlook this argument. We addressed it at page 4 of the Decision, stating: Appellant’s arguments that geonets have a different scale and functional requirements than the textiles of Davison are unpersuasive because a reference need not be structurally and functionally identical to be within the same field of endeavor. See, e.g., Bigio, 381 F.3d at 1326-27 (affirming finding that a toothbrush reference was in the same field of endeavor as a hair Appeal 2012-006000 Application 11/891,168 3 brush due to sufficient similarities in their structure and because the toothbrush could function for brushing facial hair). Next, the Request disagrees with our analysis that Davison and the Specification address the same problem of strengthening a textile. See Dec. 4. Appellant asserts that this portion of the Decision “reflects a misunderstanding of geonets” because a geonet must be able to bend to conform to the surface it overlies and must be resistant to compression. Req. Reh’g 3–4. Yet even if, as Appellant urges, the Specification is concerned with “strength in the vertical direction with the geonet oriented substantially horizontally” (id. at 4), while Davison seeks to increase tensile strength along the long axis of a textile, it still remains that both the Specification and Davison address the problem of strengthening a textile. Thus, Appellant’s contentions are not persuasive that the Board’s discussion as to why Davison satisfies both tests for analogous art (when only one is required) overlooked or misapprehended any points on appeal. Dec. 3–4. The remainder of the Request presents new arguments and evidence that Appellant did not present in his Appeal Brief or Reply Brief. Req. Reh’g 4–7. We decline to respond to these new arguments and evidence because, except in circumstances not relevant here, “Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing.” 37 C.F.R. § 41.52(a)(1). Therefore, the Request for Rehearing does not persuade us that we misapprehended or overlooked a particular matter in affirming the Examiner’s rejection of claims 1–16 and 23 under 35 U.S.C. §103(a) as being unpatentable over the combination of Heathcott and Davison. Appeal 2012-006000 Application 11/891,168 4 DECISION The Request for Rehearing has been granted to the extent that we have reconsidered our Decision, but is denied with respect to making any modification to the Decision. DENIED mls