Ex Parte Elmer et al

Patent Trial and Appeal Board

Jan 15, 2013

11173849 (P.T.A.B. Jan. 15, 2013)

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.
11/173,849 06/30/2005 John W. Elmer IL-11309 9342
24981 7590 01/16/2013
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/16/2013 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 JOHN W. ELMER,
TODD A. PALMER, and ALAN T. TERUYA
________________

Appeal 2010-001522
Application 11/173,849
Technology Center 3700
________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001522
Application 11/173,849

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-24, which are as follows:
(1) Claims 1-24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Schumacher (US 4,314,134),
Sanderson (US 4,794,259), and Löwer (US 6,977,382 B2, Dec.
20, 2005, filed Jan. 15, 2003).
(2) Claims 6, 7, 13, and 14 stand rejected under
35 U.S.C. § 103(a) as obvious over Schumacher, Sanderson,
Löwer, and Ooaeh (US 5,854,490).
(3) Claims 15-18 and 22-24 stand rejected under
35 U.S.C. § 103(a) as obvious over Schumacher, Sanderson,
Löwer, Kimba (US 6,855,929 B2), and Dick (GB 2 261 077 A).
(4) Claims 19 and 20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Schumacher, Sanderson, Löwer,
Kimba, Dick, and Ooaeh.
(5) Claims 1-6, 8-13, 15-19, and 21 stand rejected
under 35 U.S.C. § 103(a) as obvious over Carbone (US
2005/0173380), Maldonado (US 7,015,467 B2), and Hung (US
6,897,665 B2).
(6) Claims 7, 14, and 20 stand rejected under
35 U.S.C. § 103(a) as obvious over Carbone, Maldonado,
Hung, and Hiraga (US 4,784,827).
Appeal 2010-001522
Application 11/173,849

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(7) Claims 22-24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Carbone, Maldonado, Hung, Kimba,
and Dick.1
We affirm.
PRINCIPLES OF LAW
An appeal “does not, unto itself, entitle an appellant to de novo review
of all aspects of a rejection.” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citations omitted). Rather, an appealed rejection is
reviewed for error identified by the appellant. See also, In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s rejections
[.]” (citing Frye)).
An appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by submitting
arguments and/or evidence to show that the examiner made an
error in either (1) an underlying finding of fact upon which the
final conclusion of obviousness was based, or (2) the reasoning
used to reach the legal conclusion of obviousness.
Frye, 94 USPQ2d at 1075 (citations omitted). Cursory allegations of
patentability are inadequate. See e.g.,Jung, 637 F.3d at 1365 (“Jung merely
argued that the claims differed from [the prior art], and chose not to proffer a
serious explanation of this difference.”); 37 C.F.R. § 41.37(c)(1)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).

1 Our listing of the rejections is derived from the Appeal Brief’s listing
(App. Br. 10-11) and the Answer’s corrections thereto (Ans. 2).
Appeal 2010-001522
Application 11/173,849

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ANALYSIS
Appellants do not meaningfully address the rejections.2 Generally
speaking, Appellants merely copy images and text of the applied references
into the briefs and then summarily assert that: quoted limitations of
Appellants’ claims distinguish over the references; and/or quoted
obviousness rationales of the Examiner are unsupported. Appellants never
explain why the quoted limitations distinguish over the references or why
the quoted rationales lack a reasonable basis.
Though we will not provide an exhaustive discussion of the 75-page
Appeal Brief and 20-page Reply Brief, we will note some exemplary
inadequacies of Appellants’ arguments.3
For each rejection, Appellants assert three criteria for establishing
obviousness and then address each criterion in the same cursory manner. In
addressing “Criterion 1 – References Do Not Teach All Claim Limitations,”
Appellants quote a claim limitation and then summarily assert that the
references fail to teach or suggest the quoted language. In addressing
“Criterion 2 – No Reasonable Expectation of Success,” Appellants
summarily assert there is no combination of the references that would have a
reasonable expectation of success or achieve the claimed invention. In
addressing “Criterion 3 – No Reasons for Combining the References,”

2 Though it is Appellants’ burden to identify errors, note that we have
reviewed the rejections for neglected claim limitations and unreasonable
obviousness rationales. We found no instance in which the Examiner failed
to address a limitation or presented an unreasonable basis for combining the
references’ teachings.
3 Given the repetition of these inadequacies, we have not cited the
corresponding dozens of pages of the briefs.
Appeal 2010-001522
Application 11/173,849

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Appellants summarily assert the rejection fails to explain how or why the
references are combined.
Also, for two rejections (Nos. 1 and 5 supra), Appellants summarily
assert the “References Do Not Recognize Benefits of Appellants’
Invention.” Though Appellants cite portions of the Specification as
expressing these benefits, they fail to show that the benefits were
unexpected. See Kao Corp. v. Unilever United States, Inc., 441 F.3d 963,
970 (Fed. Cir. 2006) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” (citation and quotations omitted)); In re Soni, 54 F.3d
746, 750 (Fed. Cir. 1995) (Unexpected results must be established by factual
evidence; not conclusory statements.).

DECISION
For the foregoing reasons, the Examiner’s decision rejecting claims
1-24 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Vsh