Ex Parte Salmon et al

Patent Trial and Appeal Board

Aug 13, 2014

11888945 (P.T.A.B. Aug. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL D. SALMON and DAVID M. SAMEK
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Appeal 2012-003343
Application 11/888,945
Technology Center 3600
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Before MICHAEL R. ZECHER, SCOTT A. DANIELS, and
KERRY BEGLEY, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2012-003343
Application 11/888,945

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I. STATEMENT OF THE CASE
Appellants filed a Request for Rehearing (“Req. Reh’g”) under
37 C.F.R. § 41.52, on July 22, 2014. The Request for Rehearing seeks
reconsideration of our Decision (“Dec.”), mailed on May 22, 2014, with
respect to our affirmance of the Examiner’s rejection of dependent claim 16
under 35 U.S.C. § 103(a) as unpatentable over the combination of DePasqua
’794 (U.S. Patent Appl. Pub. No. 2006/0089794 A1, published Apr. 27,
2006) and Gaynor (U.S. Patent No. 7,143,363 B1, issued Nov. 28, 2006).
We have jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b).
For the reasons discussed below, we grant the Request for Rehearing to the
extent that we have reconsidered our Decision, but we deny the request to
the extent that it seeks modification of our Decision.

II. ANALYSIS
As an initial matter, we note that a request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked by us in the original decision. Arguments not raised, and
evidence not relied upon previously, are not permitted in the request for
rehearing. 37 C.F.R. § 41.52(a)(1). With that in mind, Appellants did not
attempt to construe the claimed subject matter recited in dependent claim 16
in their Brief. Instead, Appellants merely disputed the Examiner’s reliance
on DePasqua ’794’s buttons 36–46 to teach the claimed subject matter
recited in dependent claim 16. Compare Br. 10–11 with Req. Reh’g 2–4. A
request for rehearing is not an opportunity to present new arguments or
evidence that could have been presented in Appellants’ Brief. We could not
have overlooked or misapprehended arguments or evidence regarding the
Appeal 2012-003343
Application 11/888,945

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proper construction of dependent claim 16 when Appellants did not present
such arguments or evidence in the first instance.
In addition, turning to the merits of the argument presented in the
Request for Rehearing, we are not persuaded by Appellants’ assertion that
we erroneously construed “buttons configured to select from among the Spot
Lock mode, Record Track mode, Track To Start mode, and Track To End
mode,” as recited in dependent claim 16. Req. Reh’g 2. In particular,
Appellants argue that we construed the plurality of buttons to be “associated
with” the operating modes, rather than “to select from among” the operating
modes, which erroneously eliminates the required functionality and allows
DePasqua ’794’s start button 37 and stop button 39 to support the
Examiner’s obviousness rejection. Req. Reh’g 2–3 (citing DePasqua ’794
¶¶ 26, 29).
The Examiner finds, and we agree, that when dependent claim 16,
which depends from claim 14, is construed under the broadest reasonable
interpretation standard, the prior art need only describe at least one of the
recited operating modes, and further describe at least two buttons associated
with that operating mode. Dec. 7–8 (although dependent claim 14 recites
different operating modes, it requires only one mode); see Ans. 17–18. In
particular, the Examiner found that DePasqua ’794’s start button 37 and stop
button 39 teach the plurality of buttons to select from among one of the
operating modes, as required by dependent claim 16, because start button 37
and stop button 39 are associated with starting or stopping a vessel along a
projected route when there is one operating mode. Ans. 18 (citing DePasqua
’794 ¶¶ 28, 29; fig. 4). In other words, the recitation in dependent claim 16
of the plurality of buttons “to select from among” the operating modes
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Application 11/888,945

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merely requires that the plurality of buttons be associated with only one
operating mode because, based on its dependency from claim 14, only “one
of” the operating modes must be selected. Therefore, we are not persuaded
by Appellants’ argument that we erroneously construed the claimed subject
matter recited in dependent claim 16.

III. CONCLUSION
Appellants’ assertion set forth in the Request for Rehearing, and
outlined above, does not persuade us that we misapprehended or overlooked
a particular matter when affirming the Examiner’s decision to reject
dependent claim 16 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of DePasqua ’794 and Gaynor.

IV. 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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REQUEST FOR REHEARING—DENIED
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