Ex Parte Uno et al

Patent Trial and Appeal BoardDec 17, 2012

11723036 (P.T.A.B. Dec. 17, 2012)

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. 11/723,036 03/16/2007 Yutaka Uno UNOY3001/FJD 2401 23364 7590 12/18/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER IMAS, VLADIMIR ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 12/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YUTAKA UNO and KOJI MATSUMOTO ____________ Appeal 2010-001676 Application 11/723,036 Technology Center 2800 ____________ Before THU A. DANG, CARL W. WHITEHEAD, JR. and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-001676 Application 11/723,036 2 STATEMENT OF THE CASE Appellants filed a paper Request for Rehearing November 26, 2012 under 37 C.F.R. § 41.52 from the Decision on Appeal of the Patent Trial and Appeal and Board (hereinafter “Board”) mailed September 25, 2012 (hereinafter “Opinion”). In the Opinion we affirmed the Examiner’s rejection of claims 1, 3, and 4. Appellants allege that the Board erred by misapprehending or overlooking the arguments presented in the Brief. We summarize Appellants’ principal allegations of error as follows: (1) Appellants argue that we erred by failing to consider all elements of claim 1. (Req. Reh’g, 2); (2) Appellants argue that we failed to consider their argument in the Reply Brief that Chang discloses two flexible arms, as having been waived as not raised in the Appeal Brief. (Req. Reh’g, 2.) Consequently, Appellants request a rehearing of the Board’s Opinion affirming the rejection of claims 1, 3, and 4. (Req. Reh’g, 2.) We have carefully reviewed the Opinion in light of Appellants’ allegation of errors, despite Appellants’ failure to state with particularity the points believed to have been misapprehended or overlooked by the Board, with regard to the first allegation of error noted above. (See 37 C.F.R. § 41.52 (a)(1).) Appellants generally assert that the Board did not consider all elements of claim 1. We find that in their Appeal Brief, Appellants argued that Chang failed to disclose the “combination of elements 12, 13 and 14 as disclosed and claimed in the present application.” (App. Br. 5.) Elements Appeal 2010-001676 Application 11/723,036 3 12, 13, and 14 are described in Appellants’ Specification as a “stationary contact piece,” a “movable contact piece,” and a “separator” respectively. Further, Appellants argued that Chang “does not disclose an arrangement whereby the insulation wall projects into the plug insertion hole.” (App. Br. 5.) In our Opinion, we noted that Chang discloses a stationary contact piece 3 and a movable contact piece 2. (Opinion, 4.) While we did not expressly recite the presence of a “separator,” we note that Chang discloses an insulator 151, (Figure 5) which projects into the plug insertion hole and, when a plug is inserted, moves the movable contact piece. Consequently, we find no error in our finding that Chang anticipates each of the argued elements of claim 1. With respect to Appellants’ second allegation of error, in our Opinion, we expressly found that the Examiner had described the contacts within Chang as a “stationary contact piece 3” and a “movable contact piece 2” within the Final Rejection dated May 1, 2008 (Final Rejection, 2). (Opinion, 4.) Appellants, in the Appeal Brief, at pages 4-5, acknowledged, but did not dispute the Examiner’s characterization of the Chang contacts in the aforementioned manner. Thereafter, in their Reply Brief, Appellants dispute, for the first time, the Examiner’s characterization of Chang’s contacts as “stationary” and “movable.” (Reply Br. 2.) As we noted in our Opinion, “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Appeal 2010-001676 Application 11/723,036 4 Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief ... is waived.”) (citation omitted). Despite the untimely nature of Appellants’ objection to the Examiner’s characterization of the Chang contacts, we note, as we did in our Opinion, that contact piece 3 of Chang, while possessing a flexible arm 31, also includes a mounted base portion which can be described as “stationary.” We are therefore satisfied that all arguments timely submitted by Appellants in the Briefs were adequately addressed in the original Opinion. We have consequently found that Appellants have not shown that the Board erred in misapprehending or overlooking those identified arguments previously raised in the Briefs. Therefore, we maintain our position as set forth in the Opinion that Appellants have not shown error in the Examiner’s rejection of claims 1, 3, and 4. CONCLUSION In view of the foregoing discussion, we decline to modify our decision on Appeal. Consequently, we deny Appellants’ Request for Rehearing with respect to making any changes therein. DENIED llw