Ex Parte 6386642 et al

Patent Trial and Appeal Board

Sep 18, 2013

95000018 (P.T.A.B. Sep. 18, 2013)

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.
95/000,018 05/30/2003 6386642 LII70R US 4588
4859 7590 09/19/2013
MACMILLAN SOBANSKI & TODD, LLC
ONE MARITIME PLAZA FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604-1619
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/19/2013 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
____________

LACKS INDUSTRIES, INC.
Requester and Cross-Appellant

v.

HAYES LEMMERZ INTERNATIONAL, INC.
Patent Owner and Appellant
____________

Appeal 2013-001715
Reexamination Control 95/000,018
Patent 6,386,642
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION UNDER 37 C.F.R § 41.77(f)
This is a new decision under 37 C.F.R. § 41.77(f) in an inter partes
reexamination of US 6,386,642 (“the „642 patent”). The decision is a
response to 1) the Patent Owner‟s Request to Reopen Prosecution after a
decision by the Board entering a new ground of rejection under 37 C.F.R.
§ 41.77(b) of claims 1-28; and 2) the Examiner‟s subsequent determination
under 37 C.F.R. § 41.77(d) that the new rejection had been overcome.
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The Board‟s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b) and
134 (2002), and 315. We modify the Decision on Appeal mailed July 9,
2010 (“Dec. App.”) by withdrawing the new ground of rejection of claims
1-28 under 37 C.F.R. § 41.77(b) because it was overcome by Patent Owner‟s
amendment to claims 1, 13, and 22.

FINDINGS OF FACT (“FF”)
1. In the decision mailed July 9, 2010 in Appeal No. 2010-005186
(Dec. App.), the Board of Patent Appeals and Interferences (now, the Patent
Trial and Appeal Board (“PTAB”)) reversed the Examiner‟s decision to
deny the patentability of the claims under 35 U.S.C. §§ 102 and 103, and
also reversed the Examiner‟s decision not to adopt the rejection under 35
U.S.C. § 314(a) of claims 1, 13 and 22 and dependent claims 2-12, 14-21
and 23-28, which incorporate all the limitations of the independent claims
(Dec. App. 25-28). Under 37 C.F.R. § 41.77(a), the reversal of an
examiner's determination not to make a rejection proposed by the third party
requester is designated as a new ground of rejection. The PTAB thus
entered a new grounds of rejection, pursuant to 37 C.F.R. § 41.77(b), of
claims 1-28 under 35 U.S.C. § 314(a) for impermissibly enlarging the scope
of the claims in an inter partes reexamination (Dec. App. 33-34).
2. On August 9, 2010, the Third Party Requester filed a request for a
rehearing pursuant to 37 C.F.R. § 41.79. The request for rehearing in a
decision was denied (Decision on Request for Rehearing, Dec. 1, 2010
(“Req. Reh‟g”)).
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3. Electing to reopen prosecution under 37 C.F.R. § 41.77(b)(1),
Patent Owner filed a compliant
1
response on September 7, 2011, amending
claims 1, 13, and 22.
4. Under 37 C.F.R. § 41.77(c), the Third Party Requester filed
comments on August 31, 2011 which were said to be responsive to Patent
Owner‟s amendment (Comments by Third Party Requestor (“TPR
Comments”)). The Requester argued in the comments that claims 1-28 of
the „642 patent are unpatentable under 35 U.S.C. § 103 and that the PTAB
“did not consider many of the §103 rejections as discussed herein” (TPR
Comments 2). Requester explained why claims 1-4, 6-9, 12-14, 16-18, 21-
23, 25, and 25-27 were obvious in view of the various proposed rejections
(id. at 2-6) and claims 1-23, 25, 27, and 28 over another combination of
prior art publications (id. at 5). Requester did not identify where in the
record these § 103 rejections had been proposed and/or discussed previous to
their discussion in the TPR Comments.
5. The Requester did not provide comments on whether the Patent
Owner‟s amendment overcame the new ground of rejection.
6. Under 37 CFR § 41.77(d), following a response by the patent
owner and comments by the requester, the Examiner is required to issue a
determination that the rejection is maintained or has been overcome. After
considering these submissions, the Examiner determined that the claim
amendments “reinstate[ ] clause (d) to be identical to clause (d) as issued in

1
Several previous responses by the Patent Owner, including accompanying
claim amendments, were found to be defective and were not entered by the
Examiner. The Requester‟s comments were made in response to one of
these defective responses.
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claims 1, 31 [sic; 13] and 22 of the '642 patent.” (41.77(d) Determination 9,
mailed October 18, 2011). The Examiner determined that Patent Owner‟s
response overcomes the new ground of rejection because it removed the
amendment to the claims which caused them to be broader in scope than the
original claims (id.).
7. The Examiner found that the Requester‟s comments regarding the
“newly proposed” § 103 rejections (FF4) were improper because they were
not related to the new ground of rejection (41.77(d) Determination 3). The
Examiner wrote:
The August 31, 2011 comments by the third party
requester are deemed improper, are not considered, and are
hereby expunged from the proceeding file by being "closed."
Specifically, the comments are not deemed as a bona fide
response because requester makes no attempt to comply with
the requirements of 37 CFR 41.77 and reexamination
procedures. For example, requester fails to show that the
comments are limited to issues raised by the new ground of
rejection under 35 USC 314(a). As provided by 37 CFR 41.77,
prosecution is closed except for issues regarding the new
ground of rejection. Additionally, the requester fails to show
that the newly proposed rejections were necessitated by the
patent owner's most recent amendment. . . . Moreover, the
examiner cannot fathom how an amendment reinstating clause
(d) to how it appeared in the '642 patent in claims 1, 13 and 22
would necessitated new grounds of rejection that could not have
[been] earlier presented. For these reasons and in the interest of
special dispatch, the August 31, 2011 comments are deemed
improper and will not be considered or further addressed in this
action.
(Id. at 3.)
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8. Pursuant to § 41.77(e), Requester submitted a response to the
Examiner‟s determination (TPR 41. 77(e) Response, dated November 18,
2011). Requester contends:
The fact is that the claims that appeared before the Board were
the claims as amended and accepted by the Examiner in the
patent owner's response of May 28, 2004. These claims did not
include the language of section (d) and therefore, the third party
requestor was never given an opportunity to comment on the
language of section (d) as currently presented.
(Id. at 4.)
Requester further contends:
[T]he amendment presently before the Examiner has never been
previously made of record, has never been considered by the
Examiner or the Board, and has never been commented on by
the Requestor in a manner which those comments were
considered by the Examiner, the Requestor respectfully submits
that the amendment does in fact necessitate new grounds for
rejection to which the Requestor is entitled to comment.
(Id.)
9. Requester repeats their argument that claims 1-28
2
are not
patentable under 35 U.S.C. § 103. Requester did not identify where in the
record these § 103 rejections (characterized by the Examiner as “newly
proposed”) had been proposed and/or discussed previous to their discussion
in the TPR Comments.
DISCUSSION
Section 314 Rejection
The Examiner determined that the new ground of rejection under 35
U.S.C. § 314(a) is overcome by the Patent Owner‟s amendment to the claims

2
However, the actual proposed rejections did not include claims 24 and 26.
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because it eliminates the language deemed by the PTAB to impermissibly
broaden the scope and reinstated the language in its place which was part of
the original claims (FF6). We agree with the Examiner‟s determination and
withdrawn the new ground of rejection of claims 1-28 set forth the Decision
on Appeal in view of the amendments to claims 1, 13, and 22 under 37
C.F.R. § 41.77(b)(1). We therefore modify the Decision on Appeal by
withdrawing pages 25-28 and 33-34 relating to the new ground of rejection.

Rejections under § 103
Requester continues to argue that the claims are not patentable under
35 U.S.C. § 103, proposing several new § 103 rejections that Requester
contends make claims 1-23, 25, 27, and 28 obvious to one of ordinary skill
in that art (FF4 & 9). The Examiner found that the proposed rejections were
outside the scope of 37 C.F.R. § 41.77(c) which states that a requester‟s
response “must be limited to the issues raised by the Board‟s opinion
reflecting its decision and the owner’s response.” (FF7; emphasis added.)
Because the “newly proposed rejections” were not related to the PTAB
decision or Patent Owner‟s response, the Examiner did not consider them in
the subsequent determination under 37 C.F.R. § 41.77(d).
Requester did not challenge the Examiner‟s determination that the
discussed rejections were “newly proposed.” Requester contends that the
rejections were necessitated by amendment because the amendments had
never been considered before by the Examiner or the PTAB, and the
Requester was never given an opportunity to comment on the language of
section (d) of claim 1 as currently presented (FF8).
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Procedurally, to the extent Requester asks that we order the Examiner
to consider the newly proposed rejections, Requester has not identified the
statutory or other authority which gives this Board supervisory control of the
Examiner to enable the Board to make such order. The Requester‟s
recourse, for example, was a petition to direct the Examiner to reconsider the
rejections. A petition does not appear to have been filed.
Substantively, we agree with the Examiner‟s determination that the
rejections proposed by the Requester are outside the scope of § 41.77(c).
Requester contends that the rejections were necessitated by amendment and
that Requester had never been given an opportunity to comment on the claim
amendment (FF8). However, in the initial Request for Reexamination
(Rexam. Req. dated May 30, 2003), Requester had the identical claim
language before them and had addressed where such language could be
found in the prior art. See, e.g., Rexam. Req., p. 8 (claim 1), p. 14 (claim
13), and p. 21 (claim 22). The prior art included Post (pp. 4, 14, and 21) and
Hampshire (pp. 27-28, 36, and 43), and Todd (p. 47), which continue to be
cited in this proceeding, despite the broadening amendment to the claims.
The newly proposed rejections also cite Post and Hampshire (TPR
Comments 2 and 5).
Requester did not provide sufficient explanation as to why reinstating
language in the claim, which was present when the original request for
reexamination was made, necessitates new rejections, when the originally
proposed rejections were for claims which had the very same claim language
introduced by amendment by Patent Owner in their response to the section
314 rejection.
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In addition to this, the same prior art has been cited throughout the
proceeding, including before and after the amendment was introduced into
the claims, indicating that the amendments to the claims did not substantially
change the basis of the rejection.

SUMMARY
We modify the Decision on Appeal mailed July 9, 2010 by
withdrawing the new ground of rejection of claims 1-28 and withdrawing
pages 25-28 and 33-34 relating to the new ground of rejection in view of the
amendments to claims 1, 13, and 22 under 37 C.F.R. § 41.77(b)(1).

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PATENT OWNER:

MACMILLAN, SOBANSKI & TODD, LLC
One Maritime Plaza, Fifth Floor
720 Water Street
Toledo, OH 43604-1619

THIRD PARTY REQUESTER:
Brian E. Ainsworth
Prince, Heneveld, Cooper, DeWitt & Litton, LLP
695 Kenmore, SE
P.O. Box 2567
Grand Rapids, MI 49501