Ex Parte Wadley et al

Patent Trial and Appeal BoardMar 24, 2017

12673418 (P.T.A.B. Mar. 24, 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. 12/673,418 07/05/2011 Haydn N.G. Wadley 070239.000029 8007 134006 7590 03/28/2017 Vorys, Sater, Seymour and Pease LLP (UVA) 1909 K St., NW Ninth Floor Washington, DC 20006 EXAMINER VO, HAI ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 03/28/2017 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): vmdeluc a @ vorys. com patlaw @ vorys. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAYDN N. G. WADLEY, YELLAPU V. MURTY, TYRONE JONES, RAHUL GUPTA, and MATTHEW BURKINS Appeal 2015-001696 Application 12/673,418 Technology Center 1700 Before CHUNG K. PAK, WESLEY B. DERRICK, and AVELYN M. ROSS, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Pursuant to 37 C.F.R. § 41.52, Appellants request rehearing of our Decision of January 3, 2017 (“Decision”), wherein we affirmed the Examiner’s decision to reject claim 41 under 35 U.S.C. § 112, second paragraph (indefiniteness) and claims 1-5, 7, 8, 13, 15, 29, 30, 32, 37, 39- 42, 44, 45, 47, 48, and 53 under 35 U.S.C. § 103(a). See Request for Rehearing filed March 3, 2017 (“Request”). The request for rehearing is granted-in-part. Appeal 2015-001696 Application 12/673,418 DISCUSSION A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. See 37 C.F.R. § 41.52(a)(1). As to the rejection under § 112, second paragraph, Appellants contend that we overlooked that the rejection had been overcome by the amendment after final and implicitly withdrawn, and that we misapprehended the Examiner’s comments in the Advisory Action in our Decision. Request 1-2. Having further considered the record, we are of the opinion that the amendment after final did address the ground of rejection to the extent it is properly set forth by the Examiner. Although the Examiner also notes in the Final Office Action mailed November 29, 2013, that “[fjurther, it is generally uncommon in accordance with US Patent and Practice that the claim includes a phrase or sentence being enclosed in the parentheses” (Final Act. 3), the statement is not so clearly identified as a ground of indefmiteness that we are able to sustain the rejection, especially where the Examiner’s statements in the Advisory Action do not explicitly maintain the rejection for reasons identified by Appellants (Request 1). As to the rejections under § 103, Appellants contend that the Examiner’s shifting positions were misunderstood by the Board and that Appellants’ arguments raised in the Reply Brief were, accordingly, improperly deemed waived as not timely. Request 3—4. To support the argument that the Examiner’s positions shifted in going from the Final Office Action, to the Advisory Action, and then to the Examiner’s Answer, Appellants rely on a statement from the Final Office Action as explicitly identifying “the claimed ‘interstitial housing’ as provided by Terry” (quoting 2 Appeal 2015-001696 Application 12/673,418 a portion of the Final Office Action at page 8), the Examiner’s assertion in the Advisory Action that the “node pins [41] of Ervin” “read on the claimed interstitial housings” (quoting a portion of the Advisory Action at page 2), and on the Examiner’s Answer setting forth a rejection in which “the node pins of Ervin ‘are equated to the claimed interstitial housings.’ (Reply Brief at 1).” Request 3—4. Appellants further contend that the Examiner’s Answer is the first time the Examiner articulated a rejection grounded on combining Ervin’s embodiment depicted in Figure 10 with that depicted in Figure 5, relied on for the interstitial housings.1 Request 4. Appellants also maintain that the contradiction between the “claimed ‘interstitial housing’ as provided by Terry” (Final Act. 8) and the assertion in the Advisory Action that Ervin’s node pins 41 read on the interstitial housing (Advisory Action 2) makes it “apparent that Applicant was not given ‘fair notice’ of the ground of the rejection . . . relied in [on, sic] the Examiner’s Answer.” Request 4. Having considered the record carefully in light of Appellants’ contentions, we are not persuaded that Appellants were not fairly apprised of the ground of rejection relied on in the Examiner’s Answer prior to the filing of the Appeal Brief. As explained in the Decision, the Examiner—in the Final Office Action—articulated a ground of rejection in which the Ervin’s node pins 41 depicted in Figures 5(A)-5(C) were relied on for the recited interstitial housings and combined with elements depicted in Ervin’s Figure 1 Appellants further contend that “the Examiner should have identified this as a new ground of rejection” (Request 4); however, any available relief as to the conduct of examination—including any failure to designate a ground of rejection as a new ground of rejection—is a petitionable, not an appealable matter (37 C.F.R. § 1.181). 3 Appeal 2015-001696 Application 12/673,418 10, in which Terry is relied on for the filler portion. Decision (citing Final Act. 3 4). The fact that the Examiner set forth an additional, alternative mapping of recited elements onto the cited prior art in the Final Office Action at page 8—the portion cited by Appellants—does not negate the articulated ground in which Ervin’s node pins are relied on as the recited interstitial housings in combination with the elements from Ervin’s Figure 10, in which Terry is relied on for the filler portion. Further, the Advisory Action makes clear that Appellants were put on notice that the Examiner was relying on Ervin’s node pins 41 as the interstitial housings, because it addresses squarely the “contention by the Appellants] that Ervin fails to teach the interstitial housing” by stating that: [t]he node pins read on the claimed interstitial housings . . . that Terry is relied upon for teaching of fillers disposed between void created between the node pins or interstitial housings . . . [and] Terry does not need to teach interstitial housings because such have been addressed by Ervin. Advisory Action 2. As both the Notice of Appeal, filed April 29, 2014, and the Appeal Brief, filed July 31, 2014, postdate the Advisory Action, issued April 10, 2014, as well as the Final Office Action, mailed November 29, 2013, the Appellants were provided fair notice of the rejection grounded on the cited elements from Ervin’s Figure 10, the node pins 41 as the interstitial housings, and on Terry for the filler portion prior to appealing the Examiner’s rejection. Decision 5, 8. Still further, even if the Advisory Action were to be contradictory to a portion of the Final Office Action, we review the Examiner’s decision as modified by the Advisory Action. See 37 C.F.R. § 41.39(a)(1); see also 37 C.F.R. § 41.39(a)(2) (“For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from 4 Appeal 2015-001696 Application 12/673,418 which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection”). Thus, contrary to Appellants’ position in the Request, the Answer was not the first time that the Examiner relied on Erin’s node pins 41 as the recited interstitial housings and on the combination of elements from Erin’s Figures 5(A)-5(C) and Figure 10 with filler portion from Terry. Had Appellants believed that the Advisory Action introduced a new ground of rejection, they could have timely petitioned the Office to designate such rejection as a new ground of rejection in order to reopen prosecution of the above-identified application. Alternatively, they could have argued the rejection as modified by the Advisory Action in the Appeal Brief. It further follows that Appellants fail to provide good reason why they could not have raised the arguments earlier, and the contention that we erred in deeming the arguments waived is not well taken. See 37 C.F.R. § 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010); Cf. McBride v. Merrell Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted) (“Considering an argument advanced for the first time in a reply brief... is not only unfair to an appellee but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered.”). As to the rejections under § 103, accordingly, we have reconsidered our Decision, but we deny Appellants’ request to make any changes therein. 5 Appeal 2015-001696 Application 12/673,418 CONCLUSION Appellants’ request for rehearing has been granted to the extent we withdraw the affirmance of the Examiner’s decision to reject claim 41 under 35 U.S.C. § 112, 2nd paragraph. We do not make any other changes to our Decision. Accordingly, the Examiner’s decision to reject claims 1-5, 7, 8, 13, 15, 29, 30, 32, 37, 39-42, 44, 45, 47, 48, and 53 under 35 U.S.C. § 103(a) remains affirmed. No time period for taking any subsequent change in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REHEARING GRANTED-IN-PART 6