Ex Parte 7465153 et al

Patent Trial and Appeal Board

Feb 13, 2014

95001675 (P.T.A.B. Feb. 13, 2014)

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.
95/001,675 07/06/2011 7465153 5500029.2 6600
7590 08/25/2014
WOMBLE CARLYLE SANDRIDGE & RICE, PLLC
P.O. BOX 7037
Atlanta, GA 30357-0037
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/25/2014 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
____________________

Inter Partes Reexamination
GIW INDUSTRIES, INC.
v.
S.P.I./MOBILE PULLEY WORKS, INC.
____________________

Appeal 2013-009168
Reexamination Control 95/001,675
US Patent 7,465,153 B2
Technology Center 3900
____________________

Before: DANIEL S. SONG, WILLIAM V. SAINDON, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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US Patent No. 7,465,153 B2

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STATEMENT OF THE CASE
The Third Party Requester ("Requester") filed a Request for
Rehearing on March 18, 2014 (hereinafter "Rehearing Request" or "Rhrg.
Req.") under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed
February 18, 2014 (hereinafter "Decision" or "Dec."), which reversed
various final rejections of the claims and affirmed the non-adoption of
various proposed rejections by the Examiner. The Requester asserts that the
Board overlooked various points and requests modification of the Decision.
Rhrg. Req. 1.
We grant the Rehearing Request to the extent that we consider the
Requester's arguments infra, but DENY the request to modify the Decision.

Alleged Failure to Apply the Broadest Reasonable Construction
As an initial matter, we note that Requester's Rehearing Request in
general is merely a disagreement with the Board's original Decision.
Requester has not identified any overlooked arguments or misapprehended
facts, which is the purpose of a Rehearing Request.
Requester first asserts that the Board "did not afford the claims their
broadest reasonable construction." Rhrg. Req. 3. As noted above, this does
not amount to a proper basis for requesting rehearing. Although we did not
specifically lay out any claim constructions, such a fact does not mean we
did not apply the broadest reasonable interpretation standard when
construing the claims.
It is also unpersuasive to argue that the Board overlooked anything
regarding this construction or to assert that the Board failed to properly
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construe the claims when one of the main issues in this case was whether the
claims required the location of the protrusion to be on the front or back side
of the housing. During oral argument, Requester and the Board specifically
discussed this point as follows:
JUDGE MARTIN: But then is the protrusion in the front
shroud of Warman? Wouldn’t it be -- isn’t it in the back side of
--
MR. COLITZ: Again, front and back to me are relative
terms. To me, it would depend on how the pump is installed
and which way you install it in practice. I think front and back
are relative terms. I think really --
JUDGE SONG: Well, counsel, but the point here is not
that they’re necessarily relative, but it’s whether that term has
intrinsic understood meaning within the art.
MR. COLITZ: [affirmative]
JUDGE SONG: I mean, if I walk downstairs to the
garage and say, you know, please place this on the front of my
car, nobody’s going to put it on the trunk. I mean, it has -- sure,
it’s a matter of orientation, but there’s also an understood
meaning as to what constitutes front and what constitutes the
rear. So I guess that’s kind of what I’m trying to understand
here.
MR. COLITZ: Right. Certainly if that is the view
that one of ordinary skill would understand that to be, then
Warman may not be able to be used as a 102 reference. Again,
we think front and back are relative terms and you could easily
see that projection 47 as being on the front as opposed to the
rear. But in the event your honor is not persuaded, we have
plenty of other references in the 103 rejections where you do
have these features on what the patent owner is defining as the
front of the shroud.

Hearing Tr. 33-34 (emphasis added). From this exchange, it is clear that a
major issue to be decided was whether the claim language at issue required
the protrusion to be in the front or the back and whether such placement was
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found in Warman. As stated in the Decision, we "agree with the Patent
Owner" that "[t]he distinction between the front (suction) and the back side
of the impeller is important since the difference in pressure between the
pump discharge and suction…does not exist on the back side of the
impeller." Dec. 5 (citing Patent Owner's App. Br. 9). There was no
misapprehension or misapplication of claim construction standards here.
After thoroughly considering the arguments made by both sides,
1
both in the
briefs and at oral argument, we merely decided the issue contrary to
Requester's position.
Requester further argues that in reversing the rejection over
Holzenberg that "[t]here are several problems with [the Board's] analysis."
Rhrg. Req. 8. Again, as with the argument in relation to the Warman
references, Requester has not demonstrated that the Board overlooked or
misapprehended anything in coming to its conclusion. Requester merely
disagrees with the outcome. As stated in the opinion, we found Holzenberg
lacking because it disclosed only a "partially rounded tip" as opposed to the
claimed "substantially rounded tip." Dec. 8. While Requester may disagree,
it is clear that our analysis determined that a protrusion having a flat portion
that comes to a point cannot be considered "substantially rounded" as
claimed. Additionally, we concluded that because Holzenberg does not
teach a rounded relief in the area where the protrusion extends, Holzenberg's
protrusion cannot be considered to "extend into" a "rounded relief of the

1
Requester also asserts that the '153 patent defines the claimed relief "by the
inside of the clearing vanes" and not based on the front/back distinction
presented during briefing and at oral argument. It is, however, neither
apparent, nor has the Requester directed us to, where such argument has
been presented. Thus, we decline address it.
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front shroud" as claimed. See id. In sum, our Decision clearly explains why
Holzenberg does not meet the claim language and Requester has pointed to
no proper basis for rehearing on these points.
Additionally, Requester asserts that we did not address the broader
language of claims 8 and 12. As the Patent Owner points out, however,
"rather than separating the claims based on this new, or any other
distinction….Requester instead argued for the rejection of claims 1, 2, 5, 7,
8, 9, 11, 12 and 13 as anticipated by Holzenberg[] as a group." Opposition
to Request for Rehearing ("Opp.") 7. Again, it is neither apparent, nor has
the Requester directed us to, where such argument has been previously
made.
Alleged Improper Reliance upon Secondary Considerations
Requester alleges that, but does not provide any support or
explanation as to why, the Examiner's obviousness rejection was so strong
that "it is improper as a matter of law to rely upon secondary
considerations." Rhrg. Req. 13. While we do not necessarily disagree that it
may be difficult to establish non-obviousness using secondary
considerations in view of a strong showing of obviousness, we neither
concede that the rejection at issue amounts to such a strong showing nor that
in this particular instance Patent Owner's evidence was insufficient. We first
note that Requester provided no evidence in rebuttal of Patent Owner's
substantial evidence of secondary considerations. Secondly, as clearly stated
in the opinion, we considered the rejection and analyzed the secondary
consideration evidence and found both that there was a nexus and that the
evidence was sufficient to conclude that the claimed invention was non-
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obvious.
2
See Dec. 7-10. Accordingly we are not apprised of any
misapprehension or overlooking of anything to warrant a grant of rehearing.
Indefiniteness
Requester, in referring to the Board's determination that Holzenberg
fails to disclose certain claim features and the conclusion that the patent has
sufficient written description for those same features, asserts that "[i]t is
impossible to reconcile these two conclusions based upon the review of the
relevant drawings." Rhrg. Req. 16. We first note that our determination
regarding indefiniteness relied not only upon the drawings, but also upon
specifically cited passages in the '153 patent. See Dec. 11. Further, as
Patent Owner states, "the logic behind [Requester's] statement is not
apparent." Opp. 8. We agree with Patent Owner that "[t]he resolution of
this issue depends on what is disclosed in the '153 patent, not what is
disclosed in Holzenberg[]." Opp. 8-9. The Decision adequately addresses
indefiniteness and rather than pointing to any misapprehension, Requester
again merely voices disagreement with our Decision.
Non-adoption of Proposed Rejections
With regard to Holzenberg, Requester alleges that "the Board failed to
address why, as the TPR urged, the lower most protrusion of Holzenberg
does not constitute a clearing vane." Rhrg. Req. 18. As pointed out by the
Patent Owner, "the Board did not overlook this question, but rather found it
unnecessary to address it because…it had already determined that

2
As noted in the Decision, the Examiner did not actually make an
obviousness determination in view of Chegurko, but merely used Chegurko
to further emphasize that a rounded protrusion may extend into a rounded
relief. Dec. 7 (citing RAN 6).
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Holzenberg[] did not anticipate the claims for 'reasons unrelated to the
vanes.'" Opp. 9. Accordingly, there was no need to address Requester's
additional arguments relating to Holzenberg and as such the Board did not
improperly overlook such arguments.
With respect to Becker, the Requester alleges that "the Board did not
address why the convex outer surface of Becker '126 does not satisfy the
'rounded relief' recited in Claims 1-7.” Rhrg. Req. 18. On the contrary, our
Decision specifically determined that "the asserted relief in Becker is more
reasonably described as being polygonal in shape." Dec. 12. As such, we
did address why Becker does not satisfy the limitation at issue.
As with the rest of Requester's Rehearing Request, the assertions with
regard to Bunjes and Palamarchuk amount to nothing more than "asking the
Board to reconsider the merits of its decision to affirm the non-adoption of
this proposed ground of rejection, rather than pointing to something the
Board supposedly misapprehended or overlooked." Opp. 10. As stated in
the Decision, "[r]egardless of what Bunjes may show, as discussed supra,
we do not agree that in this field of endeavor a simple rearranging of
arguably similarly shaped parts is necessarily an obvious modification."
Dec. 13. Furthermore, as argued by Patent Owner, the structures in Bunjes
serve a different purpose and do not provide a basis for modification of
Warman. See Patent Owner Resp. Br. 7-8. Accordingly, our Decision
adequately addressed both Bunjes and Palamarchuk.

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REHEARING DECISION
While we have considered the Decision in light of the Request for
Rehearing, and have elaborated on certain aspects of the Decision, we
decline to modify it in any respect. As explained above, Requester's basis
for requesting rehearing is not based upon anything misapprehended or
overlooked, but amounts to an explanation as to why Requester disagrees
with the Board's Decision, which is not a proper use for Requests for
Rehearing.
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
ak

Patent Owner:
WOMBLE, CARLYLE, SANDRIDGE & RICE, PLLC
P.O. Box 7037
Atlanta, GA 30357-0037

Third Party Requester:

Michael J. Colitz, III, Esq.
Gray Robinson, P.A.
401 E. Jackson Street
Suite 2700
Tampa, FL 33602