Morris & Associates, Inc.v.Cooling & Applied Technology, Inc.

Patent Trial and Appeal Board

Oct 20, 2015

09637345 (P.T.A.B. Oct. 20, 2015)

Trials@uspto.gov Paper No. 10
571.272.7822 Entered: October 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MORRIS & ASSOCIATES, INC.,
Petitioner,

v.

COOLING & APPLIED TECHNOLOGY, INC.,
Patent Owner.
____________

Case IPR2015-00461
Patent 6,397,622 B1
____________

Before MEREDITH C. PETRAVICK, BARRY L. GROSSMAN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)

I. INTRODUCTION
Morris & Associates, Inc. (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–8 of U.S. Patent No. 6,397,622 B1 (Ex.
1001, “the ’622 patent”). Paper 1 (“Pet.”). Cooling & Applied Technology,
Inc. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6.

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Patent 6,397,622 B1
On July 21, 2015, we entered a Decision denying institution of inter partes
review of the following grounds. Paper 7 (“Dec.”).
Ground Claims Prior Art
§ 103 1 and 3–8 Innes1 and Crawford2
§ 103 2 Innes, Crawford, and Morris’1013
§ 103 1 and 3–8 Innes and Morris’0004
§ 103 2 Innes, Morris’000, and Morris’101
On August 20, 2015, Petitioner filed a Corrected Request for
Rehearing asking the Board to reconsider its Decision. Paper 9 (“Req.”).
We have considered Petitioner’s request but decline to modify our Decision.

II. DISCUSSION
A. Standard of Review
When rehearing a decision on petition, the Board will review the
decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
discretion may be determined if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
(Fed. Cir. 2004).
1 Innes et al., U.S. Patent No. 4,860,554 (issued Aug. 29, 1989)(Ex. 1004).
2 Crawford et al., U.S. Patent No. 4,788,831 (issued Dec. 6, 1988)(Ex.
1005).
3 Morris, Jr. et al., U.S. Patent No. 5,868,000 (issued Feb. 9, 1999)(Ex.
1006).
4 Morris, Jr. et al., U.S. Patent No. 3,410,101 (issued Nov. 12, 1968)(Ex.
1007).
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Patent 6,397,622 B1
The party challenging the decision has the burden of showing a
decision should be modified. 37 C.F.R. § 42.71(d). In its Request for
Rehearing, the dissatisfied party must (1) specifically identify all matters the
party believes the Board misapprehended or overlooked and (2) identify the
place where each matter was previously addressed. Id.

B. Analysis
Independent claims 1 and 8 were amended during reexamination to
require that “an entirety of said inner surface of said tank side walls is
positioned parallel to said outer edges of said at least one flight of said
auger”(“the parallel limitation”).
In the Petition, Petitioner relies upon Innes alone to teach the parallel
limitation for all of the proposed grounds. See Pet. 20–21, 24–25, 44, 46.
The Petition states:
Innes discloses that the auger is “coaxial” with the axis of the
tank, and the outer edges of the auger “closely approach” the
inner surface of the tank. Ex. 1004, 4:67–5:1, 3:44–47. To be
coaxial is to have a common axis, or to be concentric, which,
notably, is the very term contained in the definition relied upon
by Patent Owner during the reexamination of the ’622 Patent.
See Ex. 1003, pp. 256 and 268. In order to be “parallel” or
“everywhere equally distant,” the axis of the tank and the axis
of the auger flights have to be the same, or concentric/coaxial.
Thus, in Innes, the inner surface of the tank side walls is
positioned equally distant to the outer edges of the flight of the
auger.
Pet. 24–25. As can be seen from the above, Petitioner argued that Innes
meets the parallel limitation because Innes discloses an auger that is coaxial,
and coaxial is equivalent to concentric or parallel.
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In the Preliminary Response, Patent Owner argued that Petitioner’s
argument (i.e., that to be coaxial necessarily means that the parallel
limitation is satisfied) assumes that the cross-sectional shape of Innes’ auger
(i.e., worm 4) is the same as the tank and that Innes, however, does not
expressly or inherently disclose such. See Paper 6, 13–15
In our Decision, we agreed with Patent Owner that Innes’ disclosure
of a coaxial auger does not necessarily teach the parallel limitation and that
Petitioner’s argument assumed or implied that the auger has a circular cross-
sectional shape, but that “neither Petitioner nor its declarant Dr. Smith
provid[ed] sufficient argument, rationale, and evidence to support this
assumption.” Dec. 11–12. We, thus, determined, based on the record
before us at that time, that “Petitioner has failed to demonstrate that there is
reasonable likelihood that claims 1 and 3–8 are unpatentable” over the
asserted prior art. Id. at 12.
In its Request, Petitioner now attempts to cure this deficiency of the
Petition by establishing that one of ordinary skill in the art would understand
Innes to have a circular cross-sectional shape that matches Innes’ semi-
cylindrical tank. Req. 3–4. Petitioner contends that we “misapprehend[ed]
what one of ordinary skill in the art would know and understand, which is
that Innes does teach an auger having a circular cross-section.” Id. at 2. In
that regard, Petitioner proffers various new arguments: 1) that, although
Innes does not explicitly recite that the auger has a circular cross-section,
one of ordinary skill in the art would know from certain disclosures in Innes
the auger cross-sectional shape (id. at 4– 5, 13–14); 2) that Figure 2, a newly
presented annotated version of Figure 2a, and a newly presented composite
of the segments of Figure 2a illustrate that the auger is circular (id. at 5–7);
3) that the ’622 patent acknowledges in the “Background of Invention” that
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Patent 6,397,622 B1
a similar type auger has a circular cross-section (id. at 8–9); and 4) that a
declaration submitted by Patent Owner and arguments made by Patent
Owner during the related ex parte reexamination establish that Innes’ auger
has a circular cross-section (id. at 9–12).
Petitioner identifies multiple pages where it alleges the arguments in
its Request were raised in the Petition. E.g., Req. 2 (citing Pet. 14–15, 20–
21, 24–25, 35, 38–39, 44, and 55–56). We have reviewed the identified
pages and paragraphs and the remainder of the Petition. Although the
Petitioner generally discusses the reexamination proceeding (Pet. 5–8);
provides a general overview of Innes (id. at 14–16); and raises Innes in the
context of the “coaxial necessarily means that the parallel limitation is
satisfied” argument in the Petition (id. at 20–21, 24–25, 35, 38–29, 44, and
55–56), the arguments made in the Request were not raised in the Petition.
We could not have misapprehended or overlooked Petitioner’s
arguments made in the Request in reaching our Decision because Petitioner
did not raise such arguments in the Petition. A request for rehearing is not
an opportunity to supplement the initial petition and make arguments that
were not made in the petition. See 37 C.F.R. § 42.71(d).
We are not persuaded by Petitioner that we abused our discretion in
determining that Petitioner failed to demonstrate a reasonable likelihood that
claims 1 and 3–8 are unpatentable because the Petition failed to establish
with sufficient argument, rationale, and evidence to establish that the auger
of Innes has a circular cross-section.

III. CONCLUSION
We are not persuaded by Petitioner that we abused our discretion.
Petitioner’s request for rehearing is denied.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

PETITIONER:
N. Andrew Crain
Robert Gravois
Kenneth Knox
andrew.crain@thomashorstemeyer.com
robert.gravois@thomashorstemeyer.com
kenny.knox@thomashorstemeyer.com

PATENT OWNER:
Richard Blakely Glasgow
J. Charles Dougherty
bglasgow@wlj.com
jdougherty@wlj.com

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