95002386 (P.T.A.B. Sep. 19, 2016)

Ex Parte 8245764 et al

Patent Trial and Appeal BoardSep 19, 2016

95002386 (P.T.A.B. Sep. 19, 2016)

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. 95/002,386 09/15/2012 8245764 COOL-1.012 7254 22852 7590 09/19/2016 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER KAUFMAN, JOSEPH A ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/19/2016 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 ____________________ CoolIT SYSTEMS, INC., Third Party Requester, Respondent, v. ASETEK A/S, Patent Owner, Appellant. ____________________ Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B21 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, BRETT C. MARTIN, JON M. JURGOVAN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Issued to André Sloth Eriksen on August 21, 2012 (hereinafter the ’764 patent). Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 2 The Requester filed REQUESTER’S REQUEST FOR REHEARING on May 31, 2016 (hereinafter “Rehearing Request” or “Reh’g. Req.”).”) under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed April 29, 2016 (hereinafter “Decision” or “Dec.”), which reversed various final rejections of the claims made by the Examiner. The Patent Owner submitted its Opposition to Request for Rehearing (hereinafter “Opposition” or “Opp.”) on June 28, 2016. We grant the Rehearing Request to the extent that we consider the Requester’s arguments, but DENY the request to modify the Decision. The Requester’s first argument is that the Board overlooked evidence in this appeal by not considering the expert testimony of Dr. Carman. Reh’g. Req. 3. The Requester asserts that Dr. Carman’s testimony was of record via the required submissions of concurrent proceedings, which occurred after the issues in this reexamination were briefed. Reh’g. Req. 1. As the Patent Owner correctly notes, however, “notices of concurrent proceedings are to be made without comment or discussion of the issues.” Opp. 2. Furthermore, as the Patent Owner also points out, the Requester attempts to rely on Dr. Carman’s testimony because “it failed to properly submit its declaration of Seri Lee,” a declaration that “purported to stand for the identical proposition as the Carman declaration.” Id. Furthermore, the Lee declaration issue notwithstanding, the Requester has provided no explanation why it could not or did not submit a timely declaration during the reexamination proceedings, which the Patent Owner did. We did not overlook the testimony of Dr. Carman, but properly excluded it from Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 3 consideration, except to the extent that we heard oral argument regarding its content, as not properly being timely filed and before us for consideration. The Requester also asserts that the Board misapprehended aspects of Koga suggesting that it should have properly been considered a thermal exchange chamber as claimed. Reh’g. Req. 3–7. Much of this argument relies on Dr. Carman’s testimony, but even considering Dr. Carman’s testimony would not change our Decision. What the Requester apparently fails to accept is that the mere fact of thermal exchange does not turn a chamber into a thermal exchange chamber as claimed. We have already considered at length the Requester’s position that the “sucking channel” be considered a thermal exchange chamber and have rejected it. Even without declaration evidence submitted by either side, we would reject this argument. As the Patent Owner points out “[t]he Board devoted nearly four pages of its eight-page opinion to findings of fact and analysis of [Koga’s] ‘sucking channel.’” Opp. 5 (citing Dec. 4–7). Although we have already explained this in detail, Koga’s sucking channel, by its very name, is merely a conduit to carry fluid from one place to another. The fact that it may be made of material or have other properties that cause some amount of thermal exchange is irrelevant given our construction. As presented by the Patent Owner, we also agree with Judge Tigar’s assessment of the Requester’s argument “that to afford the claim term ‘thermal exchange chamber’ the breadth required to read on Koga’s ‘sucking channel” . . . would result in an unreasonable construction – i.e., it would ‘defy common sense.’” Opp. 8 (citing the Notice of Concurrent Proceedings pp. 17–18). Appeal 2015-007934 Reexamination Control 95/002,386 Patent US 8,245,764 B2 4 DECISION While we have considered the Decision in light of the Rehearing Request, we decline to modify it in any respect. 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