11786676 (P.T.A.B. Feb. 28, 2014)

Ex Parte Capodieci

Patent Trial and Appeal BoardFeb 28, 2014

11786676 (P.T.A.B. Feb. 28, 2014)

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. 11/786,676 04/12/2007 Roberto Capodieci CRI-104 8320 7590 05/29/2014 Kevin D. Erickson Pauley Petersen & Erickson Suite 365 2800 West Higgins Road Hoffman Estates, IL 60169 EXAMINER MATHEW, HEMANT MATHAI ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 05/29/2014 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 ROBERTO CAPODIECI ____________ Appeal 2012-003469 Application 11/786,676 Technology Center 3700 ____________ Before WILLIAM A. CAPP, NEIL T. POWELL, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-003469 Application 11/786,676 2 STATEMENT OF THE CASE Roberto Capodieci (“Appellant”) filed a request for rehearing (“Request”), on May 5, 2014, under 37 C.F.R. § 41.52, of our decision mailed March 3, 2014 (“Decision”). Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. In our Decision, we affirmed the Examiner’s decision rejecting claims 1-16 as indefinite under 35 U.S.C. § 112, second paragraph, because Appellant did not appeal the Examiner’s indefiniteness rejection. Decision 4. Additionally, we reversed, pro forma, the Examiner’s decision rejecting claims 1-16 under 35 U.S.C. §§ 102(b) and 103(a); and we did not reach the Examiner’s decision rejecting claims 1-16 under 35 U.S.C. § 112, first paragraph. Id. at 4-5. OPINION Appellant asserts that he raised and argued against the Examiner’s indefiniteness rejection in his Appeal Brief contrary to our finding that the indefiniteness rejection was not appealed. Request 2. Appellant contends that his argument was provided on pages 4-6 of his Appeal Brief and that “[t]he 35 U.S.C. § 112 first and second paragraph rejections are inextricably linked and as such the arguments on appeal are explicitly termed as responsive to the ‘35 U.S.C. § 112’ rejections.” Id. Appellant’s Request does not persuade us that we overlooked or misapprehended any matters in rendering the Decision. First, Appellant’s argument on pages 4-6 of his Appeal Brief is under the heading “Claim Rejections - 35 U.S.C. § 112.” Br. 4. The phrase “Claim Rejections,” however, does not refer to more than one rejection under § 112. Rather, each of Appellant’s headings in the Argument section begins with the same Appeal 2012-003469 Application 11/786,676 3 phrase. See App. Br. 6 (“Claim Rejections – 35 U.S.C. § 102”); 8 (“Claim Rejections – 35 U.S.C. § 103”). Each of those headings applies to one rejection—one rejection under 35 U.S.C. § 102, and one rejection under 35 U.S.C. §103. Further, the argument under the § 112 heading refers to “this rejection” and “the rejection” under § 112, further confirming that Appellant did not argue the § 112, second paragraph, rejection. See Br. 4, 6. Second, while in some instances arguments related to § 112, first and second paragraphs, may be linked, Appellant’s argument directed to § 112, specifically indicates that it is directed to whether “the limitation regarding sonic isolation is not supported.” Br. 4. Additionally, the assertions therein refer to where, if at all, the claim limitations are supported by the Specification. Appellant’s sole statement that “[t]hese are terms of art in the ultrasonic industry and are devices used to sonically isolate components from one another” (see Br. 5), included in Appellant’s argument in response to the Examiner’s § 112, first paragraph, rejection, does not, in and of itself, persuade us that we overlooked or misapprehended whether Appellant appealed the Examiner’s § 112, second paragraph, rejection given Appellant’s failure to expressly identify the § 112, second paragraph, rejection as a ground of rejection for review on appeal and lack of any indication that Appellant sought to challenge the Examiner’s indefiniteness rejection.1 1 As noted in the Decision, Appellant identified only three of the four rejections from the Examiner’s Final Office Action in the “GROUNDS OF RJECTION FOR REVIEW ON APPEAL” section of his Appeal Brief, omitting the § 112, second paragraph, rejection. Decision 4. Appeal 2012-003469 Application 11/786,676 4 DECISION Appellant’s Request has been granted to the extent that we have considered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED Klh