Ex Parte Falace et al

Board of Patent Appeals and Interferences

Nov 15, 2002

08879638 (B.P.A.I. Nov. 15, 2002)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH P. FALACE,
JOSEPH P. MANES,
and
DANIEL J. PLUTT
__________
Appeal No. 2000-1811
Application 08/879,638
__________
ON BRIEF
__________
Before BARRETT, RUGGIERO, and DIXON, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants request that we reconsider that portion of our
decision of July 31, 2002 wherein we sustained the Examiner’s
35 U.S.C. § 102(b) rejection of claims 1, 2, 9, 10, 14, and 17
based on Semmlow, as well as the 35 U.S.C. § 103(a) rejection of
claims 3, 6, 7, 11, and 12 based on Semmlow alone, the 35 U.S.C.
§ 103(a) rejection of claim 13 based on Semmlow and Burke, and
Appeal No. 2000-1811
Application No. 08/879,638
2
the 35 U.S.C. § 103(a) rejection of claims 15 and 16 based on
Semmlow and Woodruff.
Initially, with respect to the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 1, 2, 9, 10, 14, and 17, Appellants argue
that our original decision erred in relying on the Examiner’s
interpretation of the end of the cylindrical shaped guide pin 14
of Semmlow as having vertical and horizontal tapered surfaces
since the cylindrical pin terminates at a point. In Appellants’
view, other possibilities exist for the actual shape of the guide
pin end in Semmlow, rendering the Examiner’s interpretation not
necessarily correct.
We find no error, however, in our original decision which
found that the Examiner’s reasonable interpretation of the guide
pin structure of Semmlow established a prima facie case of
anticipation. That is, with all the structural elements present
in the single prior art reference to Semmlow, and in view of
Semmlow’s illustrated configuration of the guide pin end, it is
proper to assume that the prior art structure inherently
possesses Appellants’ functionally defined claim limitation of
aligning a cartridge retrieval mechanism in at least two
dimensions. Upon the Examiner’s determination that the prior art
structure met the functional limitation of the claim, the burden
Appeal No. 2000-1811
Application No. 08/879,638
3
shifted to Appellants to show that the prior art structure did
not do so. Appellants have presented no persuasive evidence to
rebut the assumption that the guide pin structure disclosed by
Semmlow functioned to perform alignment in at least two
dimensions. See In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997); In re King, 801 F.2d 1324, 1327,
231 USPO 136, 138-39 (Fed. Cir. 1986); In re Best, 562 F.2d 1252,
1254-55, 195 USPO 430, 433 (CAPA 1976); In re Ludtke, 441 F.2d
660, 664, 169 USPO 563, 566-67 (CAPA 1971).
In a further argument related to the guide pin structure
disclosed by Semmlow, Appellants now assert that the existence of
the intervening (unnumbered) sleeve between the tapered end and
the cylindrical shaped body of the guide pin in Semmlow provides
an indication that the guide pin end is attached to the
cylindrical body through the intervening sleeve. In Appellants’
view (Request, page 3), this raises the possibility that
Semmlow’s guide pin end and cylindrical portion are two separate
pieces.
In reviewing this argument, we make the observation that any
arguments related to the existence of an intervening connecting
sleeve in Semmlow were not made in the Brief before us on appeal.
An argument not timely made is an argument waived. Since
Appeal No. 2000-1811
Application No. 08/879,638
4
Appellants never raised this factual question with the Examiner,
we do not have the benefit of the Examiner’s position on this
question of fact. A new argument advanced in such a manner has
not afforded the Examiner an opportunity to respond to the new
argument. It is a requirement of 37 CFR § § 192 that Appellants
submit arguments in the Brief(s) specifying all of the errors
made by the Examiner in the rejection. See Ex Parte Hindersinn,
177 USPO 78, 80 (Bd. App. 1971). Consequently, we will not
consider this new argument of fact as a basis for changing our
prior decision in this case. We do note as a general observation
that, in considering the disclosure of a reference, it is proper
to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d
825, 826, 159 USPO 342, 344 (CAPA 1968).
With respect to the Examiner’s obviousness rejections of
dependent claim 13 based on Semmlow and Burke and of dependent
claims 15 and 16 based on Semmlow and Woodruff, Appellants’
assertion of error in our original decision relies on arguments
made with respect to the Examiner’s interpretation of Semmlow as
applied against appealed claim 1. For all the reasons discussed
Appeal No. 2000-1811
Application No. 08/879,638
5
supra, we find no error in our affirmance of the Examiner’s
35 U.S.C. § 103(a) rejection of claims 13, 15, and 16.
Turning to a consideration of Appellants’ arguments directed
to the Examiner’s 35 U.S.C. § 103(a) rejection of claims 3, 6, 7,
11, and 12 based on Semmlow alone, we find ourselves in agreement
with Appellants that the Examiner improperly relied on statements
in Appellants’ own disclosure to establish a basis for the
obviousness rejection. The Examiner has provided no evidence,
outside of Appellants’ own disclosure, that would support the
conclusion that the skilled artisan would have been motivated and
found it obvious to arrive at the particular docking feature
details set forth in appealed claims 3, 6, 7, 11, and 12. The
Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the asserted conclusion. See
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002).
CONCLUSION
Appellants' request for rehearing is granted to the extent
that we have reconsidered our prior decision in light of
Appellants' arguments. The Examiner’s 35 U.S.C. § 103(a)
rejection of claims 3, 6, 7, 11, and 12 is hereby reversed, but
Appeal No. 2000-1811
Application No. 08/879,638
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we are not otherwise persuaded of any errors in our opinion and
maintain the rejections of claims 1, 2, 9, 10 and 13-17. Thus,
the request for rehearing is GRANTED-IN-PART.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING/GRANTED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JFR:svt
Appeal No. 2000-1811
Application No. 08/879,638
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