Ex Parte 7338684 et al

Patent Trial and Appeal Board

May 26, 2016

95001935 (P.T.A.B. May. 26, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,935 04/02/2012 7338684 P2SI-P0001E1 2853
103460 7590 05/27/2016
Endurance Law Group, PLC
180 West Michigan Avenue
Suite 801
JACKSON, MI 49201
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/27/2016 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
____________

PERFORMANCE POLYMER SOLUTIONS, INC.
Patent Owner, Appellant, and Cross-Respondent

v.

UNIVERSITY OF DAYTON RESEARCH INSTITUTE
Requester, Respondent, and Cross-Appellant
____________

Appeal 2015-007689
Inter partes Reexamination Control No. 95/001,935
United States Patent US 7,338,684 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2015-007689
Reexamination Control No. 95/001,935
Patent US 7,338,684 B1

2

Patent Owner requests rehearing of our decision dated February 1,
2016 (“Dec.”), where we affirmed-in-part the Examiner’s decision to reject
and not reject claims 1–15 over various anticipation and obviousness
grounds as summarized on pages 26 and 27 of our decision. Request for
Rehearing filed March 2, 2016 (“Req. Reh’g”). For the reasons noted in
Requester’s comments as well as those below, we deny the request to
modify our decision.
In the Request, Patent Owner contends that, in affirming the
Examiner’s anticipation rejection of claims 1, 2, 6, 8, and 10–14, we
misapprehended the fact that Chen does not disclose a fiber yarn, and that
we erred by dismissing Dr. Thostenson’s testimony in this regard as mere
opinion evidence. Req. Reh’g 1–4.
But as we indicated in our opinion, we considered Dr. Thostenson’s
testimony regarding Chen’s preform, but nonetheless held that the evidence
as a whole weighed in favor of the Examiner’s position that Chen’s preform
is a “preform of continuous fiber” under the term’s broadest reasonable
interpretation, and therefore, anticipates claims 1, 2, 6, 8, and 10–14. Dec.
11–15. And, as Requester indicates on page 2 of comments filed March 28,
2016, Patent Owner’s arguments are not only limited to specific
embodiments and examples in Chen, but Patent Owner does not dispute that
Chen uses cords of unspecified length and, therefore, teaches continuous
fibers that reasonably constitute continuous fiber yarns.
Lastly, as we noted in our decision, Patent Owner admits that Chen
discloses a preform, albeit one that is said to be made of discrete,
interconnected, and randomly-oriented fibers. Dec. 15. Although Patent
Owner characterizes its references to Chen’s preform as “casual,” and “used
Appeal 2015-007689
Reexamination Control No. 95/001,935
Patent US 7,338,684 B1

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in the colloquial sense in an entirely different context” (Req. Reh’g 4), the
fact remains that Patent Owner acknowledges that Chen discloses a preform.
And, as noted in our decision, we found no error in the Examiner’s finding
that Chen’s preform is a preform of continuous fiber under the term’s
broadest reasonable interpretation. Dec. 15.
Accordingly, we are not persuaded that we misapprehended or
overlooked those points in rendering our decision.

CONCLUSION
For the foregoing reasons, we have granted Patent Owner’s request to
the extent that we have reconsidered our decision, but we deny the request
with respect to making any changes therein.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

Appeal 2015-007689
Reexamination Control No. 95/001,935
Patent US 7,338,684 B1

4

Patent Owner:

Endurance Law Group PLC
180 W. Michigan Ave.
Suite 501
Jackson, MI 49201

Third Party Requester:

Thompson Hine LLP Intellectual Property Group
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934