Ex Parte Wendler

Patent Trial and Appeal BoardAug 5, 2013

10477528 (P.T.A.B. Aug. 5, 2013)

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. 10/477,528 11/21/2003 Armin Wendler WEND3002/FJD 2343 23364 7590 08/05/2013 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER NGO, LIEN M ART UNIT PAPER NUMBER 3754 MAIL DATE DELIVERY MODE 08/05/2013 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 ARMIN WENDLER ____________________ Appeal 2010-005208 Application 10/477,528 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-005208 Application 10/477,528 2 STATEMENT OF CASE This is a response to a Request for Rehearing of the Board’s Decision of May 15, 2012 (“Decision”). Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. OPINION Appellant raises three issues in this request for rehearing. First, we did not consider Appellant’s Reply Brief of July 23, 2007. Request 2. Second, the Examiner’s Answer contained a new ground of rejection not labeled as such. Request 2-3. Third, it is unclear what portion of the Appellant’s Specification the Board relied upon regarding the acknowledged prior art (“APA”). Request 3. Appellant’s briefing has been fully considered. The arguments in Appellant’s Reply Brief of July 23, 2007 do not differ significantly from those in Appellant’s Appeal Brief filed December 8, 2008: the invention, as it is disclosed in Appellant’s Specification is distinct from the APA. Reply Br. 1-2. Our response remains the same: there is no language in the claims defining that distinction. Decision 4. Moreover, Appellant does not identify any argument in the Reply Brief that was not considered in the Decision. Relief for the second issue raised by Appellant is by way of petition in response to the Examiner’s Answer, not by request for rehearing to this Board. MPEP § 1207.03 (IV) (8th Edition, Revision 7) expressly states: If appellant believes that an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner’s answer requesting that a ground of rejection set forth in the answer be designated as a new ground Appeal 2010-005208 Application 10/477,528 3 of rejection. Any such petition must set forth a detailed explanation as to why the ground of rejection set forth in the answer constitutes a new ground of rejection. Any allegation that an examiner’s answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a). The factual conclusion of our Decision quoted by Appellant (Request 3 – issue (3)) directly follows and is drawn from our quotation of the portion of Appellant’s Specification relied upon by the Examiner in which Appellant admits: “[a]ny place on the lid or housing which is not to receive coating has to be protected, either with a lacquer or by covering with an adhesive film or foil.” Decision 3, citing Spec. 2, ll. 1-7. Therefore contrary to Appellant’s assertion the portion of the Specification relied upon was clear. The APA process, albeit different from that described as Appellant’s preferred embodiment, meets the limitations of method claim 22, requiring “the lid and housing being provided. . . on at least one preselected surface portion . . . with a coating [by] providing a medium, which serves for creating an eloxal coating, the medium acting solely on the area that is to be coated.” The APA medium does not “act[]” on or coat the protected areas. The APA process also ultimately results in a product that meets the express language of claims 10 and 16, which require the lid to be “provided only on at least one preselected surface portion . . . [with an eloxal layer coating].” The result of both the APA process, employing surface protection techniques, and a process like that described in Appellant’s preferred embodiment, employing pointwise application techniques (Spec. 4; Reply Br. 2), is a product coated only on a preselected surface portion as is required by claims 10 and 16. Were the process of the preferred embodiment recited in these claims, which it is currently not, patentability would hinge Appeal 2010-005208 Application 10/477,528 4 on the production of a structurally distinct product. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). DECISION The Examiner’s rejections remain affirmed. DENIED mls