09912167 (B.P.A.I. Dec. 30, 2011)

Ex Parte Ciaburro et al

Board of Patent Appeals and InterferencesDec 30, 2011

09912167 (B.P.A.I. Dec. 30, 2011)

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. 09/912,167 07/23/2001 Susan Ciaburro PA-Y1015 3969 71920 7590 01/03/2012 K&A ASSOCIATES 1407 FOOTHILL BLVD ., SUITE 233 LA VERNE, CA 91750 EXAMINER LEE, JOHN J ART UNIT PAPER NUMBER 2618 MAIL DATE DELIVERY MODE 01/03/2012 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 SUSAN CIABURRO and DAVID GONZALEZ ____________________ Appeal 2009-010912 Application 09/912,167 Technology Center 2600 ____________________ Before CARLA M. KRIVAK, CARL W. WHITEHEAD, JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the Decision on Appeal of October 28, 2011 (“Dec.”). Appellants contend the Board erred in the Decision by affirming the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a).1 1 The Decision mistakenly states “Appellants have failed to demonstrate claim 1 is obvious,” when it should read “Appellants have failed to demonstrate claim 1 is not obvious” (Dec. 4). However, the Decision makes clear “The Examiner’s decision rejecting claim 1 is affirmed,” which Appellants recognize by virtue of this Request for Rehearing (Dec. 5). Appeal 2009-010912 Application 09/912,167 2 The Decision has been reconsidered in light of Appellants’ arguments in the Request for Rehearing and no errors have been found. Therefore, the Decision is not modified for the reasons discussed below. ANALYSIS Appellants contend the Board misapprehends or overlooks Appellants’ argument that the combination of Norin (US 6,157,817) and Norin (US 6,233,433 B1) fails to disclose the limitation “slewing the satellite over orientation angles using a slow constant attitude translation,” as recited in claim 1 (Req. 2-4). In particular, Appellants argue Norin ‘817 does not describe “slow” or “constant” slewing (Req. 4). Rather, Appellants argue, Norin ‘817 discloses slewing by incrementally adjusting the satellite roll and pitch orientation, in contrast to continuous slewing (Req. 4; Norin ‘817, col. 5, ll. 1-2). Appellants assert these arguments successfully rebut the Examiner’s prima facie case of obviousness, and are not merely conclusory (Req. 9). To clarify the Decision, we address why Appellants’ evidence and argument are not sufficient. Regarding the term “slow” in claim 1, we understand the Examiner’s position to be the normal slewing operation of the satellite in Norin ‘817 meets the limitation “slow” (Ans. 12). That is, Norin 817’s slewing is slow enough for the satellite to operate properly. We find this interpretation reasonable because “slow” is a relative term, and Appellants have not presented any objective standard for measuring whether a slew rate is “slow,” as claimed, nor has a definition or other supporting evidence been provided. Appeal 2009-010912 Application 09/912,167 3 Regarding the term “constant,” the Examiner finds Norin ‘817 discloses “slewing is accomplished by incrementally adjusting (constant attitude translation) the satellite roll and orientation” (Ans. 12). Thus, we understand the Examiner’s position to be that “constant” is broader in meaning than “continuous” and reads, not only on continuous translation, but also on the incremental adjustments Norin ‘817 discloses. Appellants have provided no evidence or argument explaining why the Examiner’s interpretation of the term “constant” does not encompass both continuous and incremental adjustments. As long as the incremental adjustments are successive in time, the “constant” limitation is not distinguishable. Therefore, Appellants’ arguments regarding continuous slewing are not commensurate in scope with the claim language. DECISION Appellants’ Request for Rehearing is granted to the extent that the Decision was reconsidered, but is denied with respect to making any changes thereto. 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). REQUEST FOR REHEARING DENIED kis