Simmonds Precision Products, Inc.

Patent Trials and Appeals BoardNov 3, 2021

2020004405 (P.T.A.B. Nov. 3, 2021)

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. 15/603,126 05/23/2017 Tyler Arsenault 97651US01-U100-012873 1853 113529 7590 11/03/2021 Kinney & Lange, P.A. 312 South Third Street Minneapolis, MN 55415 EXAMINER LEE, HWA S ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 11/03/2021 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): USPatDocket@kinney.com amkoenck@kinney.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TYLER ARSENAULT, PETER J. CARINI, and DAVID H. CROWNE1 ____________ Appeal 2020-004405 Application 15/603,126 Technology Center 2800 ____________ Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant filed a Request for Rehearing (“Request” or “Req.”) under 37 C.F.R. § 41.52 seeking reconsideration of a portion of our Decision dated August 9, 2021 (“Decision” or “Dec.”). We GRANT the Request. ANALYSIS A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Simmonds Precision Products, Inc. Appeal Br. 2. Appeal 2020-004405 Application 15/603,126 2 37 C.F.R. § 41.52(a). In its Request, the Appellant observes that the Decision purports to affirm an indefiniteness rejection of claims 1–20 on the basis of the term “processor,” even though claims 1–20 were never rejected by the Examiner as indefinite on the basis of the term “processor.” Req. 1– 2. The Appellant is correct. Although both the Appeal Brief and the Examiner’s Answer mistakenly indicate that claim 1 was rejected as indefinite on the basis of the term “processor,”2 a close review of the Final Action and the Answer establishes that an indefiniteness rejection was not made by the Examiner on the basis of the term “processor.” See, e.g., Final Act. 2–4. Rather, the Examiner determined that several terms, including “processor,” “filter,” “sensor,” “transducer,” and “optical transmitter,” invoke 35 U.S.C. § 112(f), but the Examiner entered indefiniteness rejections only on the basis of the terms “filter” and “optical transmitter.” Id. at 3–4. In our Decision, we misapprehended or overlooked the fact that the Examiner did not enter an indefiniteness rejection on the basis of the term “processor.” The Appellant has identified that error. Req. 1–2. Accordingly, the Rehearing Request is granted. Additionally, we note that our erroneous affirmance of a rejection that we now understand that the Examiner did not make was largely based on the 2 See Appeal Br. 9 (“Because the specification discloses sufficient structure to perform the recited functions of each of the claim limitations recited in claim 1 – ‘optical filter’ and ‘processor,’ these limitations are not indefinite means-plus-function limitations.”); Ans. 7 (repeating the Appellant’s statement indicating that the term “processor” was the basis for an indefiniteness rejection). Appeal 2020-004405 Application 15/603,126 3 Appellant’s failure to distinguish relevant case law related to means-plus- function claiming. See Dec. 5–6. As is now apparent, the Appellant had no obligation to address that case law in view of the fact that no indefiniteness rejection was pending. In view of that, we decline to enter a new ground of rejection on the basis of the term “processor.” CONCLUSION The Decision has been reconsidered, and, for the reasons set forth above, the Request is GRANTED. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Basis Denied Granted 1–20 112(b) Indefiniteness 1–20 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–20 112(b) Indefiniteness 1–20 11, 12 112(a) Enablement 11, 12 11, 12 112(a) Written Description 11, 12 2–20 112(b) Indefiniteness 2–20 Overall Outcome 2–20 1 GRANTED