Ex Parte Dai et alDownload PDFPatent Trial and Appeal BoardJan 9, 201813417380 (P.T.A.B. Jan. 9, 2018) 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. 13/417,380 03/12/2012 Zhongtao Dai 59019US01;67097-1661PUS1 2730 54549 7590 01/11/2018 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER CHAU, ALAIN ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 01/11/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptodocket @ cgolaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHONGTAO DAI, JEFFREY M. COHEN, and KEVIN E. GREEN Appeal 2016-001506 Application 13/417,380 Technology Center 3700 Before MICHAEL L. HOELTER, JILL D. HILL, and BRENT M. DOUGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing (“Req. Reh’g”) dated November 28, 2017, under 37 C.F.R. § 41.52, of the Decision on Appeal mailed September 28, 2017 (“Decision”). This Decision sustained the Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Joshi. Decision 2, 7—9. Appellants seek a rehearing because Appellants believe “there are points that have been misapprehended or overlooked.” Req. Reh’g 1. We do not modify our opinion. Appeal 2016-001506 Application 13/417,380 THE REQUEST FOR REHEARING A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” In addition, a request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in rendering its Decision. The proper course for Appellants dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. In the present Request for Rehearing, Appellants address claim 18 contending “the Examiner’s assertions made in support of ‘design choice’ have no factual basis.” Req. Reh’g 1. More specifically, Appellants contend “[t]he Board appears to have overlooked the lack of evidentiary support by the Examiner” and that the Board did “not explain why the Examiner’s line of reasoning is ‘convincing.’” Req. Reh’g 1. As stated in the Decision, The Examiner contends that any divergence of the central passage (53) “would have been an obvious matter of design choice” “since the applicant has not disclosed that having the central passage diverge solves any stated problem or is for any particular purpose.” Final Act. 6. As per the Examiner, the system of Joshi “would perform equally well with the central passage being straight.” Final Act. 7; see also Ans. 7. Decision 7. 2 Appeal 2016-001506 Application 13/417,380 The Decision also addressed a subsequent Advisory Action dated December 26, 2014 (“Adv. Act.”). The Decision (quoting the Advisory Action) states “the rejection relying on ‘design choice’ is based on the idea that air will still be communicated through the passage unobstructed regardless of whether the central passage diverges or not.” Adv. Act. 2. The Examiner further states, “[t]he function of the central passage would be the same; communicating air to the combustion chamber.” Adv. Act. 2. Decision 8. Hence, as expressed in the Decision, the Examiner supported the finding of “design choice” by stating that (a) Appellants failed to disclose that having the central passage diverge solves any stated problem or is for any particular purpose; (b) the system of Joshi would perform equally well with the central passage being straight; (c) air would still be communicated through the passage unobstructed regardless of whether the central passage diverges or not; and, (d) the function of the central passage would be the same; i.e., communicating air to the combustion chamber. Appellants acknowledge such statements by the Examiner, but contend that there is “no factual or evidentiary support for these assertions.” Req. Reh’g 1. In Appellants’ Appeal Brief, Appellants extrapolate the above asserted need for “factual or evidentiary support” based upon a non- precedential BPAI holding that expresses a need for the Examiner to “present a ‘convincing line of reasoning.’” App. Br. 5 (referencing Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).1 Pursuing Appellants’ argument, 1 It is noted that the Boards’ opinion in Clapp addressed the Examiner’s reliance on multiple references with “no line of reasoning” as to why a 3 Appeal 2016-001506 Application 13/417,380 Appellants do not explain how the Examiner’s above-listed reasons are not a “convincing line of reasoning.” Alternatively, Appellants do not explain how an expressed need for a “convincing line of reasoning” morphed into “factual or evidentiary support” as Appellants assert or, how the Examiner is now bound to show “factual or evidentiary support” when rendering a rejection based upon “design choice.” Instead, our reviewing court has provided guidance that “design choice” is appropriate where the applicant fails “to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results.” In re Chu, 66 F.3d 292, 298—99 (Fed. Cir. 1995). See also In re Rice, 341 F.2d 309, 314 (CCPA 1965) (“[Ajppellants have pointed to no results traceable to this feature which would indicate that it is other than an obvious matter of design choice” and “Appellants have failed to show that the change [in the claimed invention] as compared to [the reference], result in a difference in function or give unexpected results.”). Here, Appellants fail to indicate that a passage that diverges results in a different function (i.e., supplying air) or gives unexpected results.2 In other skilled person “would have found it obvious to selectively pick and choose various elements and/or concepts from the several references relied on to arrive at the claimed invention.” Clapp, 227 USPQ at 973. The Board concluded that an “artisan would not have found it obvious to selectively pick and choose elements or concepts from the various references so as to arrive at the claimed invention without using the claims as a guide” and thereafter stated that “hindsight [is] not proper criteria for resolving the issue of obviousness.” Id. There is no mention of “design choice” in the Board’s analysis. 2 Unexpected results that are probative of non-obviousness are those that are “different in kind and not merely in degree from the results of the prior art.” 4 Appeal 2016-001506 Application 13/417,380 words, as per Rice, minor differences between the prior art and a claimed device may be a matter of design choice absent indications to the contrary, i.e., “[s]uch changes in design of the various features are no more than obvious variations consistent with the principles known in that art.” Rice, 341 F.2d at 314. Accordingly, Appellants’ assertions above are not persuasive of error, or that the Board misapprehended or overlooked stated arguments. Appellants also state, “[although the Board appears to have taken the Examiner's above-quoted assertions at face value, it did not do the same for [Appellants’] statements.” Req. Reh’g 2. However, as stated in the Decision, “Appellants later undermine this argument by admitting that it is not necessarily the case, but that it is ‘plausible’ that this statement is true. Reply Br. 4.” Decision 8. In short, Appellants are asking the Board to take a statement at face value when Appellants subsequently distance themselves from it by acknowledge that it is only “plausible.” To be clear, Appellants are asserting that it is improper for the Examiner to conclude “that a straight passage and a passage that diverges would perform the same” because “differently shaped passages perform differently.” Req. Reh’g 2. However, as expressed by the Examiner, whether the passage diverges or is straight, the passage still supplies air and hence functions the same. See Adv. Act. 2; Decision 8. Appellants do not explain how this is not the case. Consequently, Appellants are not persuasive the Board misapprehended Appellants’ argument. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citation omitted). 5 Appeal 2016-001506 Application 13/417,380 Appellants further address “the Examiner’s interpretation of ‘diverging.’ App. Br. at 6; Reply Br. at 4—5.” Req. Reh’g 2. Appellants contend, “the Board did not consider this argument because it allegedly treated the Examiner’s discussion as an alternate grounds of rejection rather than addressing design choice.” Req. Reh’g 2 (emphasis added). Appellants’ assertion is an incorrect reading of the Decision which clearly states that “Appellants appear to take this discussion as an alternative grounds of rejection” and that “we do not view this as an alternative grounds of rejection.” Decision 9 (emphasis added). Hence, Appellants incorrect reading of the Decision is not persuasive that the Board misapprehended or overlooked an argument made by Appellants. DECISION Appellants’ Request for Rehearing has been granted to the extent we have reconsidered our Decision in light of the statements made in Appellants’ Request for Rehearing, but is denied with respect to our making any modification to the Decision. DENIED 6 Copy with citationCopy as parenthetical citation