PALMER, Jason et al.

Patent Trials and Appeals Board

Sep 30, 2019

14388273 - (R) (P.T.A.B. Sep. 30, 2019)

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.
14/388,273 09/26/2014 Jason PALMER 2012P00366WOUS 2813
24737 7590 09/30/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MAI, TRI M
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JASON PALMER,
BART-JAN ZWART, CHRISTOPHER JOHN HUFF, and
JACOB BRINKERT
__________

Appeal 2018-008172
Application 14/388,273
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant’s1 Request for Rehearing2 pursuant to 37 C.F.R. § 41.52
seeks review of our Decision3 affirming the Examiner’s rejections of claims
1, 2, 5, 6, 8, 10, 11, and 13–15.

1 Koninklijke Philips N.V. (“Appellant”) is the applicant as provided under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
2 Dated July 7, 2019 (“Req.”).
3 Dated May 5, 2019 (“Decision” or “Dec.”).
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DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Board in rendering the original decision. See
37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03). The request may not rehash arguments originally made
in the appeal brief, neither is it an opportunity to merely express
disagreement with a decision; further, the request 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.
First, Appellant argues that the Board misapprehended the teachings
of Tesini, Rees, Tashiro, Horan, and Kesselring, which are “directed to
addressing a collapsed state of a resilient teat wall, and are not directed to
addressing a depressed state of a resilient teat wall.” Req. 11. Specifically,
Appellant submits,
even if the Board believes Tesini, Rees, Tashiro, Horan and
[Kesselring] teach a rotationally asymmetric wall thickness
distribution of a resilient teat, such teachings if true only apply
to opposing wall portions of teat 10 . . . that would come into
contact during a teat collapse whereby the rotationally symmetric
wall thickness distribution of ribs that are arranged on an inner
surface of the non-fold portion of teat 10 during a depressed state
of the teat 10 would prevent a collapse of the teat.
Id. (citing Spec. FIG. 3B). Appellant concludes,
Tesini, Rees, Tashiro, Horan and [Kesselring] . . . may not be
characterized as teaching a fold region during a depressed state
of a teat wherein the fold region has a rotationally asymmetric
wall thickness distribution for effecting an elastic transformation
by the resilient wall of the teat form the depressed state to the
distended state [because] the rib embodiments of [these prior art
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references] are located in a non-fold region during a depressed
state of a teat . . . for effecting a flow of liquid through the teat in
case of collapse of the teat wall.
Id. at 11–12 (emphasis added). Appellant submits that this argument
“clearly set[s] forth in the Appeal Brief and the Reply Brief that the
teachings of Tesini, Rees, Horan and [Kesselring] are directed to addressing
a collapsed state of a resilient teat wall, and are not directed to addressing a
depressed state of the resilient teat wall.” Id. at 9.
Reproduced below is the sole argument presented in the Appeal Brief
for the patentability of all claims on appeal:
a careful review of an entirety of Tesini, . . . Rees, Tashiro, [and]
Horan, reveals these references individually describe a rotational
symmetric wall thickness distribution in a fold region of a
resilient wall of the teat, particularly via ribs, and fail to describe,
teach or suggest, individually or in combination, a rotational
asymmetric wall thickness in a fold region of a resilient wall of
the teat as encompassed by the aforementioned limitations of
independent claims 1 and 15.
Appeal Br. 16, Section 7.A (italicized for emphasis); see also id. 17–19, 28,
29, 32, 33, 37, 42, 45–47, 51, 52, 54, 56, 57, 61, 62, 64 (relying on
arguments “as previously set forth in Section 7.A.” for each rejection); Dec.
7 (noting that merely restating a claim is not considered a presentation of an
argument for the patentability of the claim). In other words, Appellant
acknowledges that these references disclose a fold region, as claimed, but
Appellant submits the references disclose a rotationally symmetric wall
thickness distribution in their respective fold regions, particularly because
the ribs fail to impart an asymmetric wall thickness in the fold region, as
required by the claims. This same argument from Section 7.A of the Appeal
Brief is reproduced in the Reply Brief in the rejection of all claims. See
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Reply Br. 18, 25, 26, 30, 31, 32, 34–38, 41–44, 46, 49, 50–54 (relying on
arguments “as previously set forth in Section 7.A of the Appeal Brief”);
Dec. 7 (noting that merely restating a claim is not considered a presentation
of an argument for the patentability of the claim).
Notably, the Reply Brief additionally explains why the ribs disclosed
in each prior art reference fail to provide the rotational asymmetric wall
thickness required by the claims. See Reply Br. 18–19 (arguing that “Tesini
is not teaching the ribs may have differing thickness from the interior wall
but instead saying the identical varying thickness of ribs 312-314 varies
between 2mm ± 1mm”); id. at 19–21 (arguing that Rees’s ribs 8, 9, 18, 19,
36, 42, and 43 are either equidistantly spaced-apart and identical, or not
equidistantly space[d] apart but not identical); cf. Appeal Br. 68 (claim 1,
requiring, in relevant part, “equidistantly spaced-apart ribs . . . wherein at
least one of the ribs has a different length and/or width and/or thickness than
the other ribs”); Reply Br. 21–22 (arguing that Tashiro only discloses “a
rotational symmetric wall thickness” and further, that ribs 706 are identical
and not equidistantly spaced apart); id. at 22–23 (arguing that Horan is
merely cumulative and does not teach “incorporat[ing] a mechanical
property of a wall thick distribution of ribs/elastic material for preventing
both a teat collapse and a teat depression ,” as claimed).
In view of the record before us, we determine that Appellant’s current
argument that the ribs disclosed in Tesini, Rees, Tashiro, Horan, and
Kesselring are on a non-folded portion of the teat, such that the ribs cannot
at least partially effect the rotationally asymmetric wall thickness
distribution in a fold region, as claimed, is a new argument presented for the
first time in this Request for Rehearing, which is not permitted as set forth
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supra. In particular, with reference to the Examiner’s Rejections III–V, we
cannot find in either the Appeal Brief or the Reply Brief an argument that
Rees’s ribs, for example, as depicted in embodiments 12A and 12B, and
modified to include varying wall thicknesses as taught in Rees, are in a non-
fold region of the nipple. See Dec. 7 (noting that merely restating a claim is
not considered a presentation of an argument for the patentability of the
claim).
Further, Appellant’s new argument is not applicable to our
affirmances of the Examiner’s Rejections I and II involving Tesini, which
were based on Appellant’s failure to address the Examiner’s finding that
Tesini’s valve 100 at least partially effects the rotationally asymmetric wall
thickness distribution in the fold region. Dec. 5–6. Clearly, Appellant failed
to argue in either the Appeal Brief or the Reply Brief that Tesini’s valve 100
is in a non-fold region, rather than in a fold region, as claimed (and now, as
presently argued), because Appellant fails to even address the Examiner’s
reliance on Tesini’s valve 100. See Dec. 7 (noting that merely restating a
claim is not considered a presentation of an argument for the patentability of
the claim). Nor do we have, on the record before us, any response from the
Examiner addressing any argument presented by Appellant as to whether the
ribs and/or valves, as disclosed in the prior art references, are in a fold
region verses a non-fold region of the teats. See Ans. 13–15.
Similarly, Appellant’s new argument is also not applicable to our
affirmances of the Examiner’s Rejections III–V involving Tashiro, which
were based on Appellant’s failure to address the Examiner’s finding that
Tashiro’s valve in Figure 9 at least partially effects the rotationally
asymmetric wall thickness distribution in the fold region. Dec. 16. Again,
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clearly, Appellant failed to argue in either the Appeal Brief or the Reply
Brief that Tashiro’s valve in Figure 9 is in a non-fold region, rather than in a
fold region, as claimed (and now, as presently argued), because Appellant
failed to even address the Examiner’s reliance on Tashiro’s valve in Figure
9. See Dec. 7 (noting that merely restating a claim is not considered a
presentation of an argument for the patentability of the claim). Nor do we
have, on the record before us, any response from the Examiner addressing
any argument presented by Appellant as to whether the ribs and/or valves, as
disclosed in the prior art references, are in a fold region verses a non-fold
region of the teats. See Ans. 13–15.
Second, Appellant argues that “the Board incorrectly cites Tesini” as
teaching that the rotationally asymmetric wall thickness distribution is at
least partially effected through the use of rotationally asymmetric
distribution of at least two materials having a mutually different modules of
elasticity, as claimed. Req. 12. In support, Appellant submits that Tesini’s
valve is not the wall. Id. (citing Tesini ¶¶ 28, 29). However, the Board did
not make this finding; rather, the Examiner found that Tesini’s valve 100
meets this claim limitation. Dec. 4–5 (citing Final Act. 4, Ans. 5 (wherein
the Examiner finds “the presence of the valve in the areola would render the
areola region rotationally asymmetric”)). Thus, again, Appellant, in the
Request, is raising a new argument, which could have been presented earlier
in the Appeal Brief, in response to the Examiner’s findings.
Appellant also argues that “the Board incorrectly cites Tashiro” as
teaching that the rotationally asymmetric wall thickness distribution is at
least partially effected through the use of rotationally asymmetric
distribution of at least two materials having a mutually different modules of
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elasticity, as claimed. Req. 12. In support, Appellant submits that Tashiro
teaches “a non-fold region of a nipple body 130 during a depressed state of
the teat having a different modulus of elasticity of a fold region of a nipple
body 120 of a resilient wall during a depressed state of the teat.” Id. 13.
However, the Board did not make this finding; rather, the Examiner found
that Tashiro’s “valve in [Figure 9] also renders the teat rotationally
asymmetric.” Dec. 14 (quoting Ans. 14), 16. Thus, again, Appellant, in the
Request, is raising a new argument, which could have been presented earlier
in the Appeal Brief and/or the Reply Brief, in response to the Examiner’s
findings.
Finally, we wish to clarify for the parties that the claims presented in
the Appendix of the Appeal Brief, and which have been subjected to
examination, recite subject matter that may not have the scope intended by
Appellant. The Specification discloses that a fold region has a rotationally
asymmetric stiffness distribution, which is distinct from the claimed
rotationally asymmetric wall thickness distribution. See, e.g., Spec. 9 (“the
rotationally asymmetric stiffness distribution in the fold region 30 may be at
least partially effected through a rotationally asymmetric wall thickens
distribution in said region” (emphasis added)). The Specification relates ribs
as partially affecting the wall thickness distribution (see, e.g., Spec. 4
(disclosing that “[t]he fold region may, for instance, include a rotationally
asymmetric arrangement of wall thickness-defined structures, e.g.[,]
protrusions or recesses”), 7 (“inner surface 12a of the teat wall 12 features a
rotationally a-symmetric arrangement of ribs 40a, 40b”); claim 1 (clause
(i))). In comparison, the Specification relates the use of at least two
materials having a mutually different modulus of elasticity as partially
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affecting the stiffness distribution (see, e.g., Spec. 11 (disclosing that
“rotationally asymmetrically distributed ‘inlays,’ portions or patches of a
second constituent material having a modulus of elasticity that differs from
that of the first” may be used to at least partially effect “stiffness
distribution”); claim 1 (clause (ii)). The Preliminary Amendment filed
September 26, 2014 amended claim 1 to recite that “the rotationally
asymmetric stiffness distribution in the fold region” is: [at least partially
effected by (i) or (ii)].” (Emphasis added). However, the next amendment,
the Amendment after Non-Final Rejection filed on November 21, 2016,
presents claim 1 as reciting that “the rotationally asymmetric wall thickness
distribution in the fold region is: [at least partially effected by (i) or (ii)].”
We call this change to Appellant’s attention in the event the current,
narrower scope of the claims is unintended.

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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED