Ex Parte Shen et alDownload PDFPatent Trial and Appeal BoardMay 25, 201713364937 (P.T.A.B. May. 25, 2017) Copy Citation 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. 13/364,937 02/02/2012 Xiao A. Shen 4194-48500 4811 89394 7590 Futurewei Technologies, Inc. c/o Conley Rose, P.C. 5601 Granite Parkway Suite 500 Plano, TX 75024 05/30/2017 EXAMINER SANCHEZ, DIBSONJ ART UNIT PAPER NUMBER 2636 NOTIFICATION DATE DELIVERY MODE 05/30/2017 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): dallaspatents@dfw.conleyrose.com uspatent@huawei.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAO A. SHEN and YU SHENG BAI Appeal 2016-003644 Application 13/364,937 Technology Center 2600 Before CAROLYN D. THOMAS, AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-003644 Application 13/364,937 INTRODUCTION Appellants request rehearing of the Patent Trial and Appeal Board’s (“Board”) Decision mailed March 29, 2017 (“Decision”), in which we affirmed the rejection of claims 1, 2, 4—11, 13—21, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Lee (US 2006/0210216 Al, Sept. 21, 2006 ) and Sugiyama (US 2005/0213863 Al, Sept. 29, 2005) in combination with various other prior art (see Final Act. 4—22). ANALYSIS In the Request for Rehearing (“Request”), Appellants allege: (1) Appellants provided ample evidence ‘identifying] a particular advantage or a particular purpose’” (Req. Reh’g 4); (2) “the Decision affirms two contradicting assertions” (id. at 5); and (3) “the Office Action’s design choice rejection required a showing that the claimed nesting was already known” (id. at 6). We disagree. Regarding allegation (1), Appellants initially contend “the [Ejxaminer did not meet [the initial burden of presenting a prima facie case of patentability] because the Office Action fails to meet either GaV s or Gunasekaf s requirements,” 1 thus Appellants feel that “[t]he burden therefore never shifted to Appellants to disprove the Office Action’s design choice rejection” (Id. at 3). Appellants further contend that “[e]ven if Appellants were so required, Appellants provided the following evidence in the record:” (Id., citing Appeal Br. 12—14, Pre-Appeal Conference Brief, and US Patent App. No. 13/354,937). 1 In re Gal, 980 F.2d 717, 719—20 (Fed. Cir. 1992); Ex Parte Gunasekar, 2011 WL 3872007, at *5 (B.P.A.I. Aug. 29, 2011) 2 Appeal 2016-003644 Application 13/364,937 With respect to Appellants’ contention that the Examiner did not meet his/her initial burden, we highlight that a prima facie case is established when the party with the burden of proof points to evidence that is sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In particular, regarding the Patent Examiner’s burden of production: [A] 11 that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. As the statute itself instructs, the examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing prosecution of his application.” 35 U.S.C. § 132. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Here, the Examiner clearly set forth the statutory basis of the rejection, references relied upon, and reasons for such rejection, i.e., qualifying information useful to Appellants in judging the propriety of continuing prosecution (see Final Act. 4—22). As for Appellants’ contention that they “provided ample evidence ‘identifying] a particular advantage or a particular purpose’” (Req. Reh’g 4), our Decision correctly highlighted that Appellants actually did not proffer any evidence showing such alleged benefits (Dec. 4). Instead, Appellants attempt to misrepresent the Examiner’s reasons/motivation for combining Fee with Sugiyama and rearranging components taught therein, i.e., the Examiner’s finding that the combination “improves the design of Mach Zehnder modulators, reduces the space used, reduces the cost of extra fiber, reduces the time of transmission and yields predictable results ... an 3 Appeal 2016-003644 Application 13/364,937 efficient use of the substrate surface area, an optimization of the available space” (Final Act. 6). Specifically, Appellants misrepresent the Examiner by incorrectly stating: “the Office Action admits that, unlike the references, the claims effect efficient use of the substrate and optimize space” (App. Br. 12—13, citing Final Act. 6). The record before us shows no such admission from the Examiner. As noted supra, the Examiner’s findings relate to the combination relied upon, that of Lee and Sugiyama, as reducing the space used. Contrary to Appellants’ contention, the Examiner makes no statement regarding the benefits of the claimed invention. All of the Examiner’s statements/findings regarding benefits relates solely to the combined teachings of Lee and Sugiyama and the rearrangements of input/output ports taught therein, not to the claimed invention. Thus, we find unavailing Appellants’ contention that they “need not have further expounded upon the advantage[s] or purpose because the Office Action admits the advantage and purpose” (Req. Reh’g 5) given that no such admission exists. Regarding allegation (2), Appellants specifically contend “the Office Action asserts that the claims are not advantageous. . . . [T]he Office Action also asserts that the claims are advantageous. The two assertions clearly contradict each other” (Id.). We highlight that the aforementioned contention is presented for the first time here in the Request for Rehearing. To the extent Appellants present new arguments in the Request for Rehearing, such arguments at this stage of the prosecution are inappropriate and will not be considered. See 37 C.F.R. § 41.52(a)(1). Belated arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 4 Appeal 2016-003644 Application 13/364,937 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). This is equally applicable to belated arguments in the Request for Rehearing. Regarding allegation (3), Appellants contend “the Office Action’s design choice rejection required a showing that the claimed nesting was already known” (Req. Reh’g 6). We note that the facts in the Gunasekar are distinguishable from the present case in that the Examiner in Gunasekar took “Official Notice” that a claimed feature was well known in the art, i.e., that marking textual information is well known. Gunasekar, 2011 WL 3872007, at *4. No such “official notice” was taken in the present case (i.e., triggering the “well known” inquiry); instead, the Examiner here illustrates where all of the claimed components are taught/known in either Lee or Sugiyama, only adding that the rearrangement, i.e., the nesting, of such components was a matter of design choice (see Final Act. 4—6). Our Decision clearly sets forth the proper requirements for showing “design choice” (Dec. 3—4), which the Examiner provides a convincing line of reasoning to support. Thus, for at least the reasons noted supra, Appellants’ contention that the “design choice rejection required a showing that the claimed nesting was already known” is unavailing. 5 Appeal 2016-003644 Application 13/364,937 DECISION Accordingly, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes 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)(l)(iv). REHEARING DENIED 6 Copy with citationCopy as parenthetical citation