Ex Parte Crook

Patent Trial and Appeal Board

Nov 5, 2015

12589747 (P.T.A.B. Nov. 5, 2015)

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
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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
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Application 12/589,747

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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
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Application 12/589,747

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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
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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

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