Ex Parte Brobeil et al

Board of Patent Appeals and Interferences

Jun 13, 2012

11523532 (B.P.A.I. Jun. 13, 2012)

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.
11/523,532 09/20/2006 Wolfgang Brobeil BROB3001/FJD 5908
23364 7590 06/14/2012
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
06/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WOLFGANG BROBEIL, SVEN AENISHANSLIN,
JOHANNES RUCHEL, and ALEXANDER STUNZI
__________

Appeal 2010-011082
Application 11/523,532
Technology Center 1700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-011082
Application 11/523,532

2
Appellants have requested rehearing of the decision entered
September 21, 2011 (“Decision”), which affirmed the rejection of claims 27-
61 (all of the pending claims) for obviousness. The request for rehearing is
denied.

DISCUSSION
As to Appellants‟ point (A) (Req. Rh‟g 2; see also id. at 3),
Appellants argue that Madan is non-analogous art, and that Sulzer did not
teach an “allowing” step. Those arguments are addressed in the Decision
(Decision 4-5). We further note that Appellants‟ arguments, in essence, are
that they disagree with the Decision, but a request for rehearing must do
more than re-argue issues that have already been decided, even if the
applicant disagrees with the previous decision. A “request for rehearing
must state with particularity the points believed to have been
misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52. An
applicant dissatisfied with the outcome of a Board decision is entitled to
appeal the decision, see 35 U.S.C. §§ 141 and 145, but is not entitled to have
the same issue decided multiple times on the same record.
Appellants further argue that there is no teaching in Sulzer as to the
Examiner‟s finding of “„using the sprayable polyurethane system of Madan
for producing a liner internally coating a support tube‟” (Req. Rh‟g 2).
Appellants argue that it is the Examiner‟s burden to establish that a
combination of references is viable (id.).
Appellants are presenting arguments not argued in the Brief on
Appeal, and we decline to entertain them for the first time on rehearing. As
Appeal 2010-011082
Application 11/523,532

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stated in 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the briefs before
the Board and evidence not previously relied upon in the brief and any reply
brief(s) are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) and (a)(3) of this section.” Because Appellants have not
pointed out why the new arguments fall into the exceptions in 37 C.F.R. §
41.52(a)(2) and (a)(3), we decline to consider them.
Moreover, as recently noted by the Court of Appeals for the Federal
Circuit, our reviewing court, “it has long been the Board‟s practice to require
an applicant to identify the alleged error in the examiner‟s rejections.” In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As to Appellants‟ point (B) (Req. Rh‟g 2), Appellants argue that they
have filed a certified copy of their German priority document. Appellants do
not point to when that document was filed before the Decision on Appeal,
thus it does not appear to have been presented to the Examiner for review
before the filing of the Appeal. Moreover, we decline to review it on
rehearing to determine if Appellants are entitled to their German priority
date.
Finally, as to Appellants‟ argument that the preponderance of the
evidence standard of determining patentability is not applicable (Req. Rh‟g
3-4), we point Appellants‟ attention to In re Caveney, 761 F.2d 671 (Fed.
Cir. 1985). The Court of Appeals for the Federal Circuit, in noting that
patent applications are not entitled to the procedural advantages of the
presumption of validity of validity under 35 U.S.C. § 282, stated that
“preponderance of the evidence is the standard that must be met by the PTO
in making rejections.” Id. at 674; see also In re Oetiker, 977 F.2d 1443 (Fed.
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Application 11/523,532

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Cir. 1992) (noting that “patentability is determined on the totality of the
record, by a preponderance of evidence”).

REHEARING DENIED

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