Ex Parte CrookDownload PDFPatent Trial and Appeal BoardNov 5, 201512589747 (P.T.A.B. Nov. 5, 2015) Copy Citation 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. 12/589,747 10/28/2009 David B. Crook CRK-101 2557 2387 7590 11/05/2015 Olson & Cepuritis, LTD. 20 NORTH WACKER DRIVE 36TH FLOOR CHICAGO, IL 60606 EXAMINER KRECK, JOHN J ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 11/05/2015 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 DAVID B. CROOK ____________________ Appeal 2013-003950 Application 12/589,747 Technology Center 3600 ____________________ Before STEFAN STAICOVICI, LYNNE H. BROWNE, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE David B. Crook (“Appellant”) filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52, dated October 19, 2015, of our decision mailed August 18, 2015 (“Decision”). In the Decision, we affirmed the Examiner’s rejection of claims 1–4 under 35 U.S.C. § 102(b) as anticipated by Conklin (US 6,135,157, issued Oct. 24, 2000), and affirmed the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Conklin in view of the PCB Inspection Manual (Polychlorinated Biphenyl Inspection Manual, Office of Compliance, Office of Enforcement and Compliance Assurance, U.S. Environmental Protection Appeal 2013-003950 Application 12/589,747 2 Agency (August 2004)). Decision 11. In the Request, Appellant requests reconsideration of our affirmance of the Examiner’s rejection of claim 5. Request 1, 3. OPINION A Request for Rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52(a)(1) (“The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board”). In seeking our reconsideration of our Decision, Appellant presents three arguments. See Request 1–3. We grant the Request to the extent that we have considered the arguments, but otherwise deny the Request. First, Appellant contends that “neither [Conklin nor the PCB Inspection Manual] can be taken as representing a level of ordinary skill in the art of remediating environmental pollution.” Id. at 2. Appellant further contends that the Examiner has not defined “a level of ordinary skill in the PCB remediation art.” Id. Upon carefully reviewing the record, we did not overlook or misapprehend this argument. Instead, our Decision addresses Appellant’s first argument. See Decision 9–10. As explained in our Decision, we do not agree with Appellant’s assertion that the Examiner has failed to define “a level of ordinary skill in the PCB remediation art.” Id.; Request 2. As explained correctly by the Examiner: Conklin is concerned with old natural gas pipelines, which must be abandoned in accordance with EPA regulations (col. 1 lines 30-33). The EPA document “Polychlorinated Biphenyl Appeal 2013-003950 Application 12/589,747 3 Inspection Manual” teaches that old natural gas pipelines are known to contain PCBs for various reasons. Since the Manual teaches that PCB’s [sic] are found in old pipelines, and since Conklin is concerned with old pipelines, then it would have been obvious to one of ordinary skill in the art at the time of invention to have practiced the Conklin process on a pipeline which contained PCBs. Ans. 4–5; see also Decision 10. Second, Appellant contends that “Conklin fails to recognize the problem of PCB spillage, nor does Conklin suggest a solution thereof,” arguing that the rejection is in error because “Conklin Does Not Teach How to Prevent PCB Spillage.” See Request 2. At the outset, we note that Appellant argued originally (in the Appeal Brief) that the “method in Conklin would not seal the pipeline segment nor would it prevent the escape of chemical contaminants contained within the pipeline segment.” Appeal Br. 6. As correctly explained by the Examiner and addressed in our Decision, “the Examiner explains . . . that ‘filling [Conklin’s] ends to 100% would prevent escape of chemical contaminants.’” Decision 8 (citing Ans. 3, 5). To the extent that Appellant intends to present a different argument than that presented in its Appeal Brief, we respectfully remind Appellant that “[a]rguments not raised, and [e]vidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted” in a Request for Rehearing. See 37 C.F.R. § 41.52(a)(1). Moreover, we also remind Appellant that his second argument is foreclosed by KSR, in which the US Supreme Court rejected the rigid requirement that the prior art explicitly provide a teaching, suggestion, or motivation to combine known elements in order to show obviousness. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). In KSR, the Appeal 2013-003950 Application 12/589,747 4 Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Third, Appellant contends that the Examiner has failed to establish a prima facie case of obviousness, because the Examiner’s obvious-to-try theory is improper when the “PCB Inspection Manual does not teach how to avoid spillage of PCB’s.” Request 2–3 (citing Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013)). In further support of this argument, Appellant points to the 2000 issuance (publication) date of Conklin, the 2004 publication date of the PCB Inspection Manual, and argues that—if Appellant’s invention was “routine and relatively easy”—an ordinary artisan would have achieved the invention before Appellant’s date of invention, which is 2009. See id. at 3 (citing Leo Pharmaceutical Products, 726 F.3d at 1354). At the outset, we note that Appellant argued originally (in the Appeal Brief) that the “[Examiner’s] rationale that supports the conclusion of obviousness clearly is lacking in this case . . . [and that the] Examiner has failed to meet the burden.” Appeal Br. 7. We note that our Decision addressed this argument. See Decision 10 (citing, in relevant part, Ans. 5–6 and stating, “the Examiner provided two reasons for combining Conklin with the PCB Inspection Manual, and Appellant has failed to precisely explain . . . why either of these reasons is deficient”); see also, generally, id. at 7–11. Furthermore, Appellant’s attempt to now submit—for the first time in Appellant’s Request—a new argument and new evidence (i.e., publication dates of the prior art) to support Appellant’s argument is untimely. Compare Appeal 2013-003950 Application 12/589,747 5 Appeal Br. 4–7, with Request 3. We respectfully remind Appellant that “[a]rguments not raised, and [e]vidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted” in a Request for Rehearing. See 37 C.F.R. § 41.52(a)(1). DECISION We grant the Request to the extent that we have considered the arguments pertaining to matters allegedly overlooked or misapprehended, but otherwise deny the Request. DENIED cda Copy with citationCopy as parenthetical citation