UNIFIED GRAVITY CORPORATION

Patent Trials and Appeals Board

Nov 13, 2020

2019004924 (P.T.A.B. Nov. 13, 2020)

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.
14/892,923 11/20/2015 Hubert M. Lipinski UGCO 1009-3 1074
22470 7590 11/13/2020
HAYNES BEFFEL & WOLFELD LLP
P O BOX 366
HALF MOON BAY, CA 94019
EXAMINER
DAVIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
docket@hmbay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HUBERT M. LIPINSKI and STEPHEN A. LIPINSKI
____________________

Appeal 2019-004924
Application 14/892,923
Technology Center 3600
____________________

Before MICHAEL C. ASTORINO, ANNETTE R. REIMERS, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
On September 29, 2020, Appellant1 filed a Request for Rehearing
(“Req. Reh’g”), pursuant to 37 C.F.R. § 41.52, seeking reconsideration of
our Decision on Appeal mailed September 22, 2020 (“Decision”). In the
Decision, although we reverse the Examiner’s rejections of claims 1–3
and 5–29 under 35 U.S.C. §§ 101 and 112(a), we affirm the Examiner’s
rejection of claim 1 under § 103 as obvious based on Lipinski. We have
jurisdiction over the Request under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Unified Gravity Corporation is
the real party in interest. Appeal Br. 1.
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Application 14/892,923

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ANALYSIS
A Request for Rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal] Board.” 37 C.F.R. § 41.52(a). The Request is not an
opportunity for Appellant to repeat an argument raised in the Appeal Brief
or in the Reply Brief. Further, the Request for Rehearing is not an
opportunity for Appellant merely to express disagreement with a decision
without setting forth points Appellant believes the Board misapprehended or
overlooked. In the Request, Appellant may not raise an argument or submit
new evidence, except in the limited circumstances set forth in §§ 41.52(a)(2)
through (a)(4). Id.
As set forth in the record, in the Final Office Action, the Examiner
finds that Appellant’s claim 1 is obvious in view of Lipinski’s claim 1.
Final Action 17. In the Appeal Brief, Appellant argues that the Examiner’s
obviousness rejection in the Final Office Action is in error, because “the
rejection did not follow any of the required steps for an obviousness
rejection: it did not cite portions of the reference (these inventors’ prior
application, now abandoned), it did not identify differences, and it did not
provide a motivation to modify inventors’ prior work.” Appeal Br. 61. In
reply, in the Answer, the Examiner now “cite[s] portions of the reference,”
“identif[ies] differences,” and “provide[s] a motivation to modify”—i.e., the
Examiner relies on Lipinski’s paragraphs 39–55 (Answer 15–16), points out
that “[t]he difference between the claim and the prior art—proton beam
energy—is described implicitly in the final sentence of the rejection” (id.),
and states that the “motivation for modifying the reference from the
disclosed beam energy to the claimed beam energy is provided:
Appeal 2019-004924
Application 14/892,923

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experimentation to optimize the beam energy to achieve endothermic,
aneutronic fusion” (id.). Thus, according to the Examiner, the rejection
“includes clear notice of the grounds and art being applied[,] and complies
with the Graham v. Deere test for obviousness.” Id. at 15.
As we set forth in the Decision, with respect to the Examiner’s § 103
rejection,
[i]n the Final Office Action, the Examiner rejects
Appellant’s claim 1 as obvious based on Lipinski. Final
Action 27. In response to Appellant’s arguments in the Appeal
Brief, the Examiner further relies on Lipinski’s paragraphs 39–
55 to support the rejection of Appellant’s claim 1. Appeal
Br. 61–62; Answer 16. Not unexpectedly, Appellant’s
arguments in the Appeal Brief do not argue against the cited
paragraphs from Lipinski. However, Appellant does not submit
further arguments regarding the nonobviousness of claim 1 in
the Reply Brief. Inasmuch as Appellant does not persuade us
that the Examiner errs by relying on Lipinski’s paragraphs 39–
55 to render claim 1 obvious, we sustain the Examiner’s
obviousness rejection of claim 1.
Decision 5–6.
Accordingly, Appellant does not persuade us of error by arguing that
“Appellant’s impression of the Examiner’s Answer was that [Lipinski’s]
paragraphs 39–55 confirmed our position and did not in any way overcome
the error (except lack of citing a passage of Lipinski), as the Examiner[’s]
Answer still did not apply the Graham analysis to the assigned difference
between solid targets and plasma-based reactions.” Req. Reh’g 1. Appellant
does not address the Examiner’s further findings and determinations that
support the obviousness rejection, including why the Examiner fails to apply
correctly the Graham analysis with respect to the cited paragraphs of
Lipinski, in the Reply Brief. Significantly, in Appellant’s Request for
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Application 14/892,923

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Rehearing, nowhere does Appellant identify a portion of the Appeal Brief or
Reply Brief in which Appellant argues how or even that the specific, cited
paragraphs of Lipinski fail to disclose claim 1’s recitations.
Almost the entire remainder of the Request for Rehearing sets forth,
for the first time, Appellant’s specific arguments as to why the Examiner errs
by relying on Lipinski’s paragraphs 39–55 to support the rejection. Req.
Reh’g 1–4. Appellant should have submitted these arguments in the Reply
Brief, but Appellant may not raise these argument for the first time in the
Request for Rehearing.2 See 37 C.F.R. § 41.52(a).
Finally, Appellant indicates that “[h]ad we been asked during oral
argument to comment on [Lipinski’s] paragraphs 39–56, we would have
done so. We were prepared. The Board directed our attention to operability,
not obviousness, so we spent our time there.” Req. Reh’g 4. As discussed
above, however, a Request for Rehearing is limited to points the Board
misapprehended or overlooked. This argument does not identify any such
point.
Further, Appellant, rather than the Board, determines what arguments
Appellant raises during appeal. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”) (citing Ex parte
Frye, Appeal 2009-006013, at 9–10, 2010 WL 889747 (BPAI Feb. 26, 2010)
(precedential) (“The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments

2 Although the Board may consider new arguments submitted in the
Request for Rehearing under certain circumstances, those circumstances are
inapplicable here. See, e.g., 37 C.F.R. § 41.52(a)(2)–(a)(4).
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Application 14/892,923

5
and evidence produced thereon.”)). During a hearing before the Board,
“[A]ppellant may only . . . present [an] argument that has been relied upon in
the [Appeal] [B]rief or [R]eply [B]rief.” 37 C.F.R. § 41.47(e)(1).
Accordingly, Appellant does not show that the Board misapprehends
or overlooks points raised in the appeal, or that the Board errs by affirming
the Examiner’s obviousness rejection of claim 1 based on Lipinski.
CONCLUSION
Outcome of Decision on Rehearing

Final Outcome of appeal after Rehearing:

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

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Denied Granted
1 103 Lipinski 1
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–3, 5–29 101 Utility 1–3, 5–29
1–3, 5–29 112(a) Enablement 1–3, 5–29
1 103 Lipinski 1
Overall
Outcome:
1 2, 3, 5–29