Ex Parte Veeningen et al

Patent Trial and Appeal Board

Dec 21, 2016

12751331 (P.T.A.B. Dec. 21, 2016)

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.
12/751,331 03/31/2010 Daniel M. Veeningen 2841-03600 1442
92297 7590 12/23/2016
Pnnlp.v Rose P P
EXAMINER
P.O.Box 3267
Houston, TX 77253
MICHENER, BLAKE E
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL M. VEENINGEN,
FRANK BENJAMIN SPRINGETT,
and DEAN BENNETT
Appeal 2014-009037
Application 12/751,331
Technology Center 3600
Before LYNNE H. BROWNE, ANNETTE R. REIMERS,, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Daniel M. Veeningen et al. (Appellants) filed a request for rehearing
under 37 C.F.R. § 41.52 (hereinafter “Request), dated December 14, 2016,
of our Decision mailed October 14, 2016 (hereinafter “Decision”). In the
Decision, we affirmed the Examiner’s rejections of claims 1—24.
DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
Appeal 2014-009037
Application 12/751,331
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03). It may not rehash arguments originally made in the
Brief, neither is it an opportunity to merely express disagreement with a
decision. It may not raise new arguments or present new evidence except as
permitted by paragraphs (a)(2) through (a)(4). See 37 C.F.R. § 41.52. The
proper course for an Appellant dissatisfied with a Board decision is to seek
judicial review, not to file a request for rehearing to reargue issues that have
already been decided. See 35 U.S.C. §§ 141, 145.
Appellants assert that “the Decision misconstrued the nature of the
Examiner’s rejections made in the Final Office Action and the relation of
Appellants’ arguments to those rejections.” Request 2. In support of this
assertion, Appellants note that:
the Federal Circuit has held that an Examiner’s characterization
of a reference as being a “primary” or “secondary” reference in
an obviousness rejection is not controlling. See In re Mouttet,
686 F.3d 1322, 1333 (Fed. Cir. 2012) (“But where the relevant
factual inquiries underlying an obviousness determination are
otherwise clear, characterization by the examiner of prior art as
“primary” and “secondary” is merely a matter of presentation
with no legal significance.”); see also In re Bush, 49 CCPA 752,
296 F.2d 491, 496 (1961) (“ ... we deem it to be of no
significance, but merely a matter of exposition, that the rejection
is stated to be on A in view of B instead of on B in view of A, or
to term one reference primary and the other secondary”).
Request 4. Relying on Mouttet, Appellants contend that the rejection
proposed by the Examiner fails because “substituting the receiving antenna
38 of Hall 2 with the adapter 37 of Hall 1 would render Hall 2 unsatisfactory
for its intended purpose of communicating with a downhole network due to
the different operating characteristics of antenna 3 8 of Hall 2 and adapter
37 of Hall 1.” Id. (emphasis omitted).
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Appeal 2014-009037
Application 12/751,331
Appellants’ reliance on Mouttet is misplaced. In the instant rejection,
the Examiner does not characterize one reference as being “primary” and the
other as being “secondary.” See Final Act. 8—10. Rather, the Examiner
proposes modification of Hall 1 in view of Hall 2. This is not the situation
described in Mouttet. Rather it is the exception noted in Mouttet where the
Federal Circuit further held that “[wjhile we recognize that there may be
some cases in which relevant factual determinations inhere in such
characterization of prior art references, this case is not one.” In re Mouttet,
686 F.3d at 1333. Here, as noted by Appellants, “the Final Office Action
did not merely argue that it would have been obvious to modify Hall 1 in
view of the teachings of Hall 2, but instead, argued that it would have been
obvious to ‘use the actuator and frame taught by Hall 2 with the apparatus
taught by Hall 1.”’ Request 3 (emphasis omitted). Thus, the proposed
modification requires use of Hall 2’s actuator and frame with Hall 1 ’s
apparatus, and not vice-versa. Accordingly, Appellants’ arguments which
are predicated upon a modification of Hall 2 are not responsive to the
rejection as articulated by the Examiner.
For these reasons, we did not misapprehend the Examiner’s rejection
or Appellants’ arguments.
DECISION AND ORDER
We grant the Request to the extent that we have considered the
arguments pertaining to matters allegedly overlooked or misapprehended,
but otherwise deny the Request.
DENIED
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