Ex Parte Dittrich

Patent Trial and Appeal Board

Nov 30, 2016

10866106 (P.T.A.B. Nov. 30, 2016)

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.
10/866,106 06/14/2004 Gerhard Dittrich DITT3002/FJD 7970
23364 7590 12/02/2016
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
POPE, DARYL C
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD DITTRICH
Appeal 2010-011244
Application 10/866,106
Technology Center 2600
Before: JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 on
May 20, 2013 (“Request”), requesting that we reconsider our Decision on
Appeal of March 19, 2013 (“Decision”). In our Decision, we affirmed the
Examiner’s rejection of claims 1—3, 5—7, and 10-14 under 35 U.S.C.
§ 103(a) as obvious over the combination of Bellavia and Kail. We regret
the delay in responding to the Request.
We reconsider our Decision in light of Appellant’s arguments in the
Request, but we decline to change the Decision. We are not persuaded that
Appeal 2010-011244
Application 10/866,106
we misapprehended or overlooked the points argued by Appellant in
rendering our Decision.
ANALYSIS
Appellant presents four points misapprehended or overlooked in
rendering our Decision. (Request 1—2). First, Appellant contends:
The Board has misunderstood what is meant by remotely
in the present invention. The field devices which are serviced
according to the present invention can be remotely located, as
can the smoke detectors of Bellavia et al, but, and this is the
important distinction which the Board has missed, the radio
signal can be transmitted miles away. The remoteness applies to
the field device and to the source of the radio signal. This is not
the case with Bellavia et al. In Bellavia et al, the smoke detector
may be remotely located, but the light source must be closely
located. One does not expect the light source to be located several
miles away.
(Request 1).
First, we note all claims on appeal are silent regarding any mention of
“remote” or “remotely.” We also find Appellant’s point is unsupported by
the arguments presented in the Appeal Brief, and is therefore untimely under
37 C.F.R. § 41.52 (a)(1).1 To the extent our reviewing court might find
Appellant’s argument compliant with the provisions of 37 C.F.R. § 41.52
(a)(1), we find Appellant’s point is contravened by Appellant’s Specification
which describes a non-limiting, exemplary embodiment within the scope of
claim 1, in which the transmitting unit “can be a simple, pocket-sized, hand
1 37 C.F.R. § 41.52 (a)(1) (“Arguments not raised, and Evidence not
previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section . . . .”)
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Appeal 2010-011244
Application 10/866,106
transmitter. Such transmitting units are used in many areas of application,
e.g. as garage door openers or as radio remote controls for motor vehicles.”
(Spec. 119). Therefore, we conclude our broader reading of claim 1 is
reasonable, because we find our interpretation is fully consistent with
Appellant’s Specification. {Id.).2 For at least these reasons, we find
Appellant’s first general argument does not identify any point overlooked or
misapprehended by the Board in its Decision.
Second, Appellant contends “Why would one expect a person skilled
in the art, faced with the problem faced by the inventor of the present
invention to turn to Bellavia et al.?” (Request 2).
Because the Examiner (Final Act. 2—3) relies on an improvement
expressly described in Kail (microprocessor 22, Fig. 1, col. 4), we find the
Examiner provides sufficient articulated reasoning with some rational
underpinning to establish why an artisan would have been motivated to
improve the control circuitry of Bellavia (Fig. 7, 98c) by using or
substituting a microprocessor, as described in Kail. (Final Act. 2—3).
Therefore, we find Appellant’s general argument does not identify any point
overlooked or misapprehended by the Board in its Decision.
Third, Appellant contends that the Board should rely upon common
sense as identified in KSR (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398
(2007)) and not consider the Bellavia. (Request 2). For at least the reason
given above regarding Appellant’s second contention, we find Appellant’s
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
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Appeal 2010-011244
Application 10/866,106
general argument does not identify any point overlooked or misapprehended
by the Board in its Decision.
Fourth, Appellant contends “Kail is of no consequence since it cannot
remove the defect noted above in Bellavia et al.” (Request 2). We find
Appellant’s general argument unavailing, given that all claims on appeal are
silent regarding any mention of the argued terms “remote” or “remotely”
(Request 1), as discussed above regarding Appellant’s first contention.
Therefore, Appellant has not identified any points overlooked or
misapprehended by the Board in its Decision.
In summary, Appellant’s attempt to characterize Bellavia’s
disclosures as directed to non-remote configurations lacks merit. On this
record, we are not persuaded that we misapprehended or overlooked the
points argued by Appellant in rendering our Decision, and Appellant thus
has not persuaded us of error in our Decision.
DECISION
We grant Appellant’s Request for Rehearing to the extent that we
have reconsidered our Decision, but we deny the Request 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)(l)(iv).
REQUEST FOR REHEARING - DENIED
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