Ex Parte 7,547,114 B2 et alDownload PDFPatent Trials and Appeals BoardApr 25, 201490011694 - (R) (P.T.A.B. Apr. 25, 2014) Copy Citation 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. 90/011,694 05/16/2011 7,547,114 B2 1055.101 1352 53720 7590 09/22/2014 Chen Yoshimura LLP Attention Ying Chen 333 W. El Camino Real, Suite 380 Sunnyvale, CA 94087 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/22/2014 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 ____________ Ex parte YLX LTD. Patent Owner ____________ Appeal 2014-003969 Reexamination Control 90/011,694 Patent US 7,547,114 B2 Technology Center 3900 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-003969 Patent 7,547,114 B2 Reexamination Control 90/011,694 2 I. STATEMENT OF THE CASE Owner has filed a Request for Rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”) on June 24, 2014 for reconsideration of our affirmance of the Examiner’s rejection of claim 26 in a Decision mailed April 25, 2014 (hereinafter “Decision”). The Decision reversed the Examiner’s rejection under 35 U.S.C. § 102(b) of claims 31 and 32 over Kato; and affirmed the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1–4, 7–10, 12, 13, 15–19, and 26–30 over Kato and McGuire, and of claims 6, and 20–23 over Kato, McGuire, and Harbers. We have reconsidered our Decision regarding claim 26 in light of Owner’s comments in the Request. We grant the Rehearing Request to the extent that we consider the Owner’s arguments infra, but DENY the request to modify the Decision regarding claim 26. As noted infra, we maintain our affirmance of the Examiner’s rejection of claim 26. II. ISSUE The issue we address on this Request is whether Owner has identified that the Board has misapplied the relevant law or misapprehended Owner’s arguments set forth in the Appeal Brief by finding that Owner has failed to show error in the Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) over Kato and McGuire. Appeal 2014-003969 Patent 7,547,114 B2 Reexamination Control 90/011,694 3 III. ANALYSIS A “request for rehearing must state with particularity the points believed to have been misapprehend or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). In our prior Decision, we reversed the Examiner’s rejection of claims 31 and 32 under 35 U.S.C. § 102(b) over Kato (Decision 8–9), but affirmed the rejection of claim 1 (and claim 26 depending therefrom but not argued separately) under 35 U.S.C. § 103(a) over Kato in further view of McGuire (Decision 9–13). Owner contends “because of the similarity of the language of claim 26 [which was rejected under 35 U.S.C. § 103(a) over Kato and McGuire] and the relevant element of claim 31[which as rejected under 35 U.S.C. § 102(b) over Kato],” the Examiner’s rejection of claim 26 “cannot stand” (Request 2). Although Owner concedes that “the patent owner did not separately argue the patentability of claim 26 in its Appeal Brief” (Request 2), Owner contends “the rejection of claim 26 should have been reversed for the same reasons that the rejection of claims 31 and 32 is reversed” (Request 1). In our prior Decision, we only considered those arguments actually made by Owner in the Appeal Brief. As Owner concedes, “the patent owner did not separately argue the patentability of claim 26 in its Appeal Brief” (Request 2). That is, Owner could have separately argued the patentability of claim 26 but chose not to do so. It is inappropriate for Owner to discuss for the first time in a Request for Rehearing matters that could have been raised in the Appeal Brief. “The failure to raise all issues and arguments diligently, in a timely fashion, has Appeal 2014-003969 Patent 7,547,114 B2 Reexamination Control 90/011,694 4 consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision). See also 37 C.F.R. §41.52 (a)(1): Rehearing . . . “Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37 , 41.41 , or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section . . . (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted.” In our prior Decision, we only consider whether Owner has shown the Examiner erred in rejecting claims 31 and 32 as being anticipated by the teachings of Kato, and in rejecting claim 1 (and thus claim 26 depending therefrom but not separately argued) as obvious over the teachings of Kato in further view of McGuire (Decision 9–13). As we found in our Decision, “Owner has not shown the Examiner erred in rejecting independent claim 1” and “does not provide separate arguments” for claim 26 depending therefrom (Decision 13). Thus, as set forth in our Decision, claim 26 falls with claim 1 over Kato in view of McGuire under 35 U.S.C. § 103(a) (id.). Furthermore, although Owner contends in the Request “the rejection of claim 26 should have been reversed for the same reasons that the rejection of claims 31 and 32 is reversed” (Request 1), we note that the consideration as to whether a claim is anticipated by the teachings of Kato (i.e., claims 31 and 32) would be different from the consideration as to whether a claim Appeal 2014-003969 Patent 7,547,114 B2 Reexamination Control 90/011,694 5 would have been obvious over the combined teachings of Kato in further view of McGuire (i.e., claim 1 and claim 26 depending therefrom). Because Owner merely sets forth new arguments with respect to claim 26 that Owner did not make in the Appeal Brief (Request 1–2), Owner has not identified that the Board has misapplied the relevant law or misapprehended the Owner’s argument. We therefore maintain our affirmance of the Examiner’s rejection of claim 26 under U.S.C. § 103(a) over Kato and McGuire. IV. CONCLUSION AND DECISION We have carefully considered the arguments raised by Owner in the Request for Rehearing. Although we have considered our prior Decision in light of the Request for Rehearing, we decline to modify our prior Decision in any respect. We are still of the view that the invention set forth in claim 26 is unpatentable over the applied prior art under 35 U.S.C. § 103(a) based on the record before us in the original appeal. As explained above, Owner’s basis for requesting rehearing is not based upon any issue misapprehended or overlooked, but amounts to presentation of new arguments not set forth in the Appeal Brief, which is not a proper use for Requests for Rehearing. REHEARING DENIED gvw Appeal 2014-003969 Patent 7,547,114 B2 Reexamination Control 90/011,694 6 Patent Owner: Chen Yoshimura LLP Attention Yin Chen 333 W. El Camino Real Suite 380 Sunnyvale, CA 94087 Third Party Requester: Dariush G. 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