Ex Parte V et al

Patent Trial and Appeal BoardApr 26, 2016

12497849 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/497,849 0710612009 93730 7590 07/22/2016 HONEYWELL/WOOD PHILLIPS Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 FIRST NAMED INVENTOR Arunraj V 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H0023158/8364/l 08691/2850 7332 EXAMINER FARDANESH, MARJAN ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): ksanderson@woodphillips.com patentservices-us@honeywell.com docketing@woodphillips.com PTOL-90A (Rev. 04/07) ~UNITED STATES PATENT AND TR~ADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARUNRAJ V, VIGNESHKUMAR NATESAN, YUV ANY AG, and ABARNA SHANMUGASUNDARAM 1 Appeal2014-001890 Application 12/497,849 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered April 28, 2016 ("Decision") affirming the rejection of claims 6-9, 21, and 22 as obvious under 35 U.S.C. Â§ 103(a). We deny the requested relief. 1 Appellants identify the Real Party in Interest as Honeywell International Inc. (App. Br. 2). Appeal2014-001890 Application 12/497,849 ANALYSIS Appellants raise several arguments for the first time in the Request for Rehearing. It is inappropriate, however, for Appellants to discuss for the first time in a Request for Rehearing matters that could have been raised in the Appeal Brief. Appellants fail to "explain what 'good cause' there might be to consider the new argument. On this record, Appellant's new argument is belated." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision). The restrictions governing the presentation of new arguments or evidence in a request for rehearing are set forth in 37 C.F.R. Â§ 41.52 (a): Arguments not raised, and Evidence not previously relied upon, pursuant to Â§ Â§ 41.3 7, 41.41, or 41.4 7 are not permitted in the request for rehearing except as permitted by paragraphs (a )(2) through (a)(4) of this section ... (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to Â§ 4 l .50(b) are permitted. (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted. Because none of the above exceptions applies in this case, 2 we find that Appellants' new arguments, briefly discussed below, are waived. Appellants argue for the first time in the Request for Rehearing that the Examiner's rationale for combining the glove of Banet with the finger cot probe of Branigan, namely, to "reduce the angular displacement of the detector relative to the light sources, in order to obtain more accurate 2 Indeed, Appellants expressly recognize our complete reliance upon the Examiner's position, noting "[t]he Examiner and the Board in the Decision erred in making an improper modification of the primary [reference]" (Req. Reh'g 1). 2 Appeal2014-001890 Application 12/497,849 measurements" (Ans. 4), finds no support in the cited references, and is merely "made up conjecture all based upon[] hindsight." Req. Reh'g. 1-2. Appellants acknowledge that Branigan describes the problem of angular displacement of a detector relative to a light source, but contend that such discussion pertains only to prior art devices using an adhesive to secure the monitor to the finger, and not the device taught by Banet (id. at 2). Appellants also assert that the ring locking element disclosed by Finarov as facilitating application of a sensor would "unduly complicate Banet's device without providing any improvement" (id. at 2-3). Because Appellants did not raise the above arguments with the Examiner, we do not have the benefit of the Examiner's position on the factual questions they present. We note, however, that Appellants' contentions concerning the combination of Banet and Branigan depend entirely on unsubstantiated attorney argument, which cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We also observe that Branigan's discussion of angular displacement as a problem present in devices utilizing adhesive-based attachments does not contradict or otherwise detract from the Examiner's finding that the combination of Branigan and Banet would reduce angular displacement and improve measurement accuracy relative to the glove of Banet alone (see Ans. 4 ). Concerning Finarov, we observe that the Examiner relied on Finarov for its teaching "that having the finger exert force to stretch the cover for it to have an elongated shape is a known alternate equivalent technique of wrapping the elastic cover around the finger as the finger is inserted into the digit portion of the glove" (id. at 5). The Examiner did not rely on Finarov for its disclosure that a locking ring may be employed "[ t Jo sufficiently 3 Appeal2014-001890 Application 12/497,849 stretch the cover [] so as to apply the desired pressure to the tissue" (Finarov i-f 50). See Ans. 4--5. In summary, we grant the Request to the extent that we have reconsidered the record. The Request for Rehearing is denied. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). REHEARING DENIED 4