13717980 - (R) (P.T.A.B. Jul. 30, 2019)

CLARKE, ALAN L. et al.

Patent Trials and Appeals BoardJul 30, 2019

13717980 - (R) (P.T.A.B. Jul. 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. 13/717,980 12/18/2012 ALAN L. CLARKE 9360 50947 7590 07/30/2019 GILBRETH & ASSOCIATES, P.C. PO BOX 2428 BELLAIRE, TX 77402-2428 EXAMINER CLEMENTE, ROBERT ARTHUR ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 07/30/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALAN L. CLARKE and SCHUYLER SMITH1 ____________ Appeal 2018-006594 Application 13/717,980 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and JANE E. INGLESE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON REHEARING This is in response to Appellant’s timely Request for Rehearing of our Decision sustaining the Examiner’s rejection of claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over Ostreicher in view of Nilsen. As background, the Examiner concluded that it would have been obvious to modify Ostreicher’s Figure 4 embodiment to include a non- 1 Appellant is the Applicant, Jonell Inc., which is identified as the real party in interest (Br. unnumbered page 2). Appeal 2018-006594 Application 13/717,980 2 threaded portion in the knob cavity immediately adjacent its entry as suggested by Nelson in order to ensure correct alignment of the threads (i.e., to prevent cross threading) (Non-Final Action (dated December 8, 2016) 8). In the Appeal Brief, Appellant argued that the Figure 4 embodiment of Ostreicher, as described by Appellant, does not have an alignment problem and thus does not need the modification proposed by the Examiner (Br. unnumbered page 14). In our Decision, we considered this argument unpersuasive because Appellant provided no citation to Ostreicher’s specification disclosure in support of the Figure 4 description and because the Examiner found that “Ostreicher . . . does not disclose the end cap fitting tightly enough in the filter element to provide alignment, in particular tightly enough to prevent cross threading” (Ans. 6) (Dec. 4). The Decision emphasized that Appellant did not challenge the Examiner’s finding (i.e., no Reply Brief had been filed) (id.). In the subject Request, Appellant argues that Figure 4 itself supports Appellant’s description thereof in the Appeal Brief and that the Examiner’s above quoted finding had already been challenged with this description whereby it was not necessary to again challenge the finding in a Reply Brief (Request for Rehearing unnumbered page 2). Appellant’s argument, as initially presented in the Appeal Brief and reiterated in this Request, is based on the unsupported proposition that Ostreicher’s Figure 4 embodiment is so precisely aligned as to prevent cross threading. Contrary to Appellant’s apparent belief, Figure 4 of Ostreicher does not support this proposition because the individual threads are not depicted in sufficient detail as to reveal whether they are aligned or Appeal 2018-006594 Application 13/717,980 3 misaligned. Therefore, we continue to perceive merit in the Examiner’s finding that Ostreicher does not disclose alignment sufficient “to prevent cross threading” (Ans. 6). In the Request, Appellant offers new evidence in the form of a “modified” Figure 4 of Ostreicher (Request for Rehearing unnumbered page 3) as well as new argument and evidence concerning Figure 3 of Nilsen (id. at unnumbered page 4). The Request gives no reason, and therefore does not show good cause, for these belated offerings. Accordingly, we will not consider this new evidence and argument for purposes of the present appeal. 37 C.F.R. § 41.41(b)(1)(2). For these reasons, we deny Appellant’s Request for Rehearing with respect to making any changes in our Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED