Ex Parte Shen et al

Patent Trial and Appeal Board

May 25, 2017

13364937 (P.T.A.B. May. 25, 2017)

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)
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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
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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
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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.
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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
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