Ex Parte Chubb et al

Patent Trial and Appeal Board

Sep 20, 2016

12806749 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/806,749 08/19/2010
7590 09/21/2016
Francis C. Hand, Esq.
c/o Carella, Byrne, Cecchi, Olstein, Brody & Agnel
5 Becker Farm Road
Roseland, NJ 07068
Richard A. Chubb
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4433
EXAMINER
RO HRH OFF, DANIEL J
ART UNIT PAPER NUMBER
3637
MAILDATE DELIVERY MODE
09/21/2016 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
Ex parte RICHARD A. CHUBB and RALPH R. W ARSCH
Appeal2014-006882
Application 12/806,749
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered July 14, 2016
("Decision"), which affirmed the rejection of claims 1, 4, and 8 as obvious
over Winsler1 in view of McKinley,2 the rejection of claims 2, 3 and 9-11 as
obvious over Winsler in view of McKinlay and Banicevic, 3 and the rejection
of claim 6 as obvious over Winsler in view of McKinlay and Kaspar. 4
Appellants contend that we misapprehended or overlooked several points in
1 Winsler et al., US 3,499,245, iss. Mar. 10, 1970.
2 McKinlay et al., US 2006/0260229 Al, pub. Nov. 23, 2006.
3 Banicevic et al., US 5,975,664, iss. Nov. 2, 1999.
4 Kaspar et al., US 5,255,473, iss. Oct. 26, 1993.
Appeal2014-006882
Application 12/806,749
the record before us with respect to independent claims 1 and 8. Req. Reh' g
1. We find no point of law or fact that we misapprehended or overlooked in
arriving at our Decision.
DISCUSSION
Appellants raise three issues in their request for rehearing. We
address each in tum below.
First, Appellants assert that we overlooked certain limitations in claim
1 that require "a frame wherein the horizontal rails and vertical stiles of the
frame are of different cross-sections" in contrast to Winsler, which "teaches
that the frame 22 is made of four identical members 36." Req. Reh'g 2. In
our Decision, we adopted the Examiner's finding that Winsler discloses rails
and stiles in the configuration claimed. Decision 3. Appellants' argument is
a repetition of an argument made in their brief, which we fully considered
and found unpersuasive in adopting the Examiner's findings.
Second, Appellants argue that the Decision does not rely on intrinsic
evidence to interpret the terms of the claims. Req. Reh'g 2. Specifically,
Appellants assert that Specification provides "intrinsic evidence of the
meaning of the term 'permanently closed' [and the term 'flat body'] in a
non-ambiguous manner," and thus, our reliance on extrinsic evidence to
interpret these terms was not warranted. Id. at 2-7. We are not persuaded
that we overlooked any point of law or fact in arriving at our interpretation
of the claims. In particular, in our Decision, we found that the plain and
ordinary meaning of these terms was consistent with the Specification, and
we noted that the Specification does not express a clear intent to deviate
from the terms' plain meanings. See Thorner v. Sony Computer Entm 't Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) ("It is not enough for a patentee
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Appeal2014-006882
Application 12/806,749
to simply disclose a single embodiment or use a word in the same manner in
all embodiments, the patentee must clearly express an intent to redefine the
term." (citations omitted) (internal quotation marks omitted)). Further,
although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Finally, we note that we did not rely
exclusively on extrinsic evidence in the Decision. Rather, the Decision
states only that the Examiner's interpretation of a permanent connection was
consistent with the plain and ordinary definition of permanent, as found in a
dictionary. See Decision 4.
Finally, Appellants argue that we overlooked their explanation
regarding their argument that "[i]t is unreasonable for the Examiner to
consider the extrusion 36 of Winsler to be both a rail ... and a stile." Req.
Reh' g 7-8 (emphasis omitted). In their brief, Appellants argued:
Further, it is unreasonable for the Examiner to consider the
extrusion 36 of Winsler to be both a rail having "four walls
permanently connected to each other to define a fully enclosed
central hollow box" and a stile having "a flat body and a pair of
walls extending from said flat body to define a channel receiving
said insulated glass unit .... "
Appeal Br. 8. Appellants provided no further explanation in their briefs
regarding this statement. Here, Appellants assert that this argument is
related to their argument that the rail and stiles must have different cross-
sections and that "claim 1 is not readable on the multiple element structure
ofWinsler of an extrusion 36 and a molding strip 58." Id. We consider
these to be either arguments that were raised and addressed in our Decision
or new arguments that could have been previously raised, and thus, we
decline to address them here.
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Appeal2014-006882
Application 12/806,749
CONCLUSION
We have carefully reviewed the original Decision in light of
Appellants' request, but we find no point of law or fact that we overlooked
or misapprehended in arriving at our decision. Therefore, Appellants'
request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
DENIED
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