Ex Parte Wintzer et al

Patent Trial and Appeal BoardAug 30, 2017

13505222 (P.T.A.B. Aug. 30, 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. 13/505,222 04/30/2012 Wolfram Wintzer 47923-220768 6775 23643 7590 09/01/2017 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER LAZORCIK, JASON L ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOLFRAM WINTZER, PETER MUHLE, LARS ARNOLD, ALOIS WILLKE, HAGEN GOLDAMMER, and ANDREAS BAATZSCH Appeal 2016-003912 Application 13/505,2221 Technology Center 1700 Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and JEFFREY R. SNAY, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing2 on the Decision on Appeal, mailed June 23, 2017, affirming the Examiner’s rejection of claims 25—35 in the above- identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). For the reasons set forth herein, the Request is denied. In the Final Action,3 the Examiner determined that the glass lens structure depicted in Figure 11 of Hosoe is a solar concentrator as required by independent claim 25 because the term solar concentrator is a functional 1 According to Appellants, the real party in interest is Docter Optics SE. See Appeal Brief 1, Sept. 23, 2015 [hereinafter Appeal Br.]. 2 Request for Rehearing, Aug. 21, 2017 [hereinafter Request], 3 Final Office Action, May 13, 2015 [hereinafter Final Action], Appeal 2016-003912 Application 13/505,222 limitation, and the biconvex lens depicted by Hosoe would be capable of focusing, and thus concentrating, solar light. See Final Action 5; Answer 7— 8. In response, Appellants argued that solar concentrator means, more narrowly, a structure that “has an input surface larger than its output surface and is designed so that light entering the input surface is tunneled to and leaves the output surface (except for minor losses).” Appeal Br. 6. In our Decision, we determined that Appellants had failed to show persuasive evidentiary support for this narrower definition of the term solar concentrator by reference to the Specification, a dictionary, or otherwise. See Decision 5. We also agreed with the Examiner’s interpretation that solar concentrator is a functional term that refers to any device that concentrates solar light, and we concluded that this was the term’s broadest reasonable interpretation in light of the Specification. See id. at 5—6. In the Request for Reconsideration, Appellants point to passages in the Specification that, according to Appellants, demonstrate “that the term ‘solar concentrator’ includes a light exit surface, a light entry surface and a tapering light guide portion surface between the light entry surface and the light exit surface.” Request 1; see also id. at 2 (citing Spec.42—3, 6, 14—15, 17, 21, and 20-22, Fig. 3). We do not find within Appellants’ arguments any point that we have misapprehended or overlooked in our Decision. While the Specification describes a specific solar concentrator with various structural features, such as a light entry face, a light exit face, and a tapering light guide portion, claim 25 recites some of these structural features explicitly. Thus, 4 Specification, Apr. 30, 2012 [hereinafter Spec.]. 2 Appeal 2016-003912 Application 13/505,222 Appellants have not persuasively argued that interpreting solar concentrator requires the reader to import structural features from the Specification. See Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988) (“[Wjhile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims.”). Appellants also present new arguments and evidence that our “Decision incorrectly finds that ‘the portion of Hosoe’s lens identified by the Examiner as the light guide portion is clearly tapering toward the portion identified as the light exit face.’” Request 2 (citing Decision 6); see also id. at 2-4. In our Decision, we found no persuasive evidence that the Examiner reversibly erred in interpreting Hosoe’s disclosure as teaching a tapering light guide portion and the surfaces recited in claim 25, in part because Appellants’ contrary argument was “conclusory and d[id] not specifically address the Examiner’s interpretation of Hosoe’s Figure 11.” Decision 6. A request for Rehearing may not contain newly raised arguments unless (1) they are based upon recent relevant case law, (2) they are responding to a designated new ground of rejection by the Board, or (3) they are arguing that the Board’s decision contains an undesignated new ground of rejection. See 37 C.F.R. § 41.52(a). Because Appellant’s new arguments were not presented in the Appeal Brief or the Reply Brief, and they are not within the categories of new arguments allowed by 37 C.F.R. § 41.52(a)(2)- (4), the arguments are untimely, and we do not consider them. Finally, in our Decision, we found unpersuasive Appellants’ argument that the “light guide portion” designated by the Examiner in Hosoe’s Figure 11 does not merge into the exit face “with a continuous first derivative” as 3 Appeal 2016-003912 Application 13/505,222 recited by claim 25 in part because “[a] function that has a continuous derivative is a continuous function (e.g., the straight-line shape shown in Applicant’s Fig. 3).” Decision 6 (citing Appeal Br. 12). We stated that the Examiner had set forth persuasive mathematical reasons why Appellants’ argument was incorrect, and we stated that Appellants had not offered rebuttal evidence on this issue in the Reply Brief.5 See id. Appellants now argue that “there is no identified portion of Hosoe’s optical element OE that is a tapering light guide portion”; therefore, Appellants argue that there is no identified intersection, and thus, “it cannot be said that the merger limitation of claim 25 is satisfied by Hosoe.” Request 5. This argument relies on Appellants’ newly raised arguments about the features of Hosoe’s Figure 11 discussed above, and as such, the argument is untimely. Because Appellants have not identified any point in our Decision that we have misapprehended or overlooked, and the newly raised arguments are untimely, the Request for Rehearing is denied. No time period for taking any subsequent action in connection with this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016). DENIED 5 Reply Brief, Mar. 11, 2016. 4