Ex Parte TarnowskiDownload PDFPatent Trial and Appeal BoardOct 21, 201613149054 (P.T.A.B. Oct. 21, 2016) 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. 13/149,054 05/31/2011 German Claudio Tarnowski VEST/0209US (060663) 1713 13923 7590 01/30/2017 Patterson Rr SheriHan T T P / Vesitas; EXAMINER 24 Greenway Plaza, Suite 1600 Houston, TX 77046 KARIM, ZIAUL ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 01/30/2017 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): PAIR_eOfficeAction@pattersonsheridan.com PS Docketing @ pattersonsheridan .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERMAN CLAUDIO TARNOWSKI Appeal 2016-000377 Application 13/149,054 Technology Center 2100 Before JOHNNY A. KUMAR, MATTHEW J. McNEILL, and SCOTT E. BAIN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-000377 Application 13/149,054 Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (“Request”) on December 20, 2016, for reconsideration of our Decision mailed October 25, 2016 (“Decision”). The Decision affirmed the Examiner’s rejections of claims 1—18. We reconsider our decision in light of Appellant’s Request for Rehearing, but we decline to change the decision. We find Appellant’s arguments unpersuasive for the reasons given in our prior Decision. Decision 5—6. We agree with the Examiner’s findings (Ans. 3—20) that claims 2—5 are unpatentable under 35 U.S.C. § 103(a) over Rocabert and Thisted for the reasons given in the Final Rejection and Examiner’s Answer. According to Appellant, our prior Decision did not consider Appellant’s arguments presented in the Appeal Brief for claims 3, 4, and 5. Request 2. In particular, Appellant contends, “Although the Decision mentions dependent claims 2—5 within the context of identifying contention (2), the Decision plainly does not address any of the specific claim language that is recited in claims 3, 4, and 5 and that had been separately argued by the Appellant in the Appeal Brief.” Request 3 (emphasis added). Our prior Decision is based upon the factual findings stated by the Examiner in the Final Office Action of August 27, 2014, and the Answer mailed July 20, 2015. We disagree with Appellant’s contention because it misstates the facts of record. Contrary to Appellant’s contention, this Board did not merely presume that the Examiner is correct. Rather, as the panel stated: We agree with the Examiner and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by 2 Appeal 2016-000377 Application 13/149,054 the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. Decision 5 (emphasis added). Adoption of the Examiner’s findings and reasons can form an adequate record to permit judicial review. In Hyatt, the Federal Circuit explicitly pointed out that “[t]he Board adopted the examiner’s findings” and “[t]he Board adopted the examiner’s analysis.” In re Hyatt, 211 F.3d 1367, 1370—71 (Fed. Cir. 2000). The court in Hyatt then concluded that “the Board addressed the limitations of each claim in a manner adequate to permit judicial review” and the court “decline[d] the invitation to vacate the Board’s decision on the ground that [the Board] failed to explain its reasoning sufficiently to enable us to review its rulings.” Id. at 1371. Further, Appellant’s attention is directed to the court’s Rule 36 decision in In re Carnahan, 440 F. App’x 927 (Fed. Cir. 2011) (nonprecedential), where the Federal Circuit affirmed the Board decision in Ex parte Carnahan, Appeal 2010-011437 (BPAI Jan. 13, 2011), which “incorporate[d] ... by reference” the Examiner’s Answer {id. at 2). As to Appellant’s argument that the Board has erred because the Board did not review the particular findings contested for dependent claims 2—5 and failed to directly consider all of Appellant’s arguments (Request 2), we disagree with Appellant’s conclusion that this panel erred. Appellant, in making general allegations, appears to argue that this Board erred by not providing an individualized critique of each argument that Appellant presented for dependent claims 2—5 in the Appeal Brief and Reply Brief. However, as stated above, our prior Decision is based upon the factual findings stated by the Examiner in the Final Office Action of August 27, 2014, and the Answer mailed July 20, 2015. 3 Appeal 2016-000377 Application 13/149,054 Moreover, this panel did not state in its decision that it was not reviewing the particular findings contested for claims 3—5 and did not state that it was not considering Appellant’s arguments. Instead, this panel considered all of Appellant’s argument in its deliberations and reviewed the particular findings contested in Appellant’s Briefs. This panel did not err in not discussing individually each of Appellant’s arguments in its ultimate decision. We also note that Appellant grouped the arguments for dependent claims 3-5 with the argument for claim 2. See App. Br. 17 (“The rejection of dependent claims 3-5 suffer from similar deficiencies as those discussed above with respect to claim 2.). The prior Decision explicitly addressed Appellant’s arguments related to claim 2 and incorporated the Examiner’s findings related to claims 3-5, as well. Thus, Appellant has not persuaded us that we overlooked an argument in the Appeal Brief, nor has Appellant persuaded us of error in our decision. We decline to change our prior Decision. CONCLUSION For the aforementioned reasons, Appellant’s contentions have not persuaded us of error in our Decision mailed October 25, 2016. Accordingly, while we have granted Appellant’s Request for Rehearing to the extent that we have reconsidered our decision, that request is denied with respect to making any changes therein. 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 4 Copy with citationCopy as parenthetical citation