Ex parte Feiler

Board of Patent Appeals and Interferences

Jan 18, 2002

08726088 (B.P.A.I. Jan. 18, 2002)

Judge Cohen has been substituted on the merits panel of1
the present application in place of Judge Lazarus, who has
retired. See, In re Bose Corp., 772 F.2d 866, 869, 227 USPQ
1, 4 (Fed. Cir. 1985).
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written for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FREDERIC C. FEILER
____________
Appeal No. 2000-0451
Application No. 08/726,088
____________
ON BRIEF
____________
Before MCCANDLISH, Senior Administrative Patent Judge, COHEN,1
and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to appellant's request for rehearing
of our decision mailed March 29, 2001, wherein (among other
determinations) we affirmed the examiner's rejection of claims
Appeal No. 2000-0451
Application No. 08/726,088
2
1, 3 and 6 through 10 under 35 U.S.C. § 102(b) as being
anticipated by Noiles (U.S. Patent No. 4,978,356).
We have carefully reviewed the points of argument raised
by appellant in the request, however, we note that instead of
directing the request for rehearing to points which were
misapprehended or overlooked in rendering the decision on
appeal as is mandated by 37 CFR § 1.197(b), appellant has
essentially made new grounds of argument (regarding dependent
claim 8) which were not previously presented in the brief on
appeal.
While appellant recognizes that no separate argument was
presented in the brief (Paper No. 11) or in the reply brief
(Paper No. 13) concerning the examiner's rejection of
dependent claim 8 under 35 U.S.C. § 102(b) as being
anticipated by Noiles, appellant now urges that claim 8
deserves substantive consideration and characterizes this
Board's determination that dependent claims 7 and 8
(particularly claim 8) should fall with independent parent
Appeal No. 2000-0451
Application No. 08/726,088
3
claim 6 as being "a specious basis for upholding an otherwise
defective rejection" (request, page 2).
37 CFR §§ 1.192(c)(7) and 1.192(c)(8)(iii) clearly place
the burden on appellant to state in the brief that the claims
of a given group subject to a particular ground of rejection
"do not stand or fall together" and also to present arguments
for the separate patentability of each of the claims to be
contested, and, with regard to a rejection based on 35 U.S.C.
§ 102, requires appellant to specify the error in the
rejection and to set forth why a particular claim or group of
claims is patentable, including any specific limitations in
the rejected claim or claims which are not present in the
prior art relied upon in the rejection. If, as in the present
case, appellant has not complied with the above dictates of 37
CFR § 1.192, then the regulation provides that the Board
"shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of that
claim alone." As was made clear in the paragraph bridging
pages 12 and 13 of our decision mailed March 29, 2001, this is
essentially what transpired with regard to appellant's
Appeal No. 2000-0451
Application No. 08/726,088
4
dependent claims 7 and 8 on appeal rejected under 35 U.S.C. §
102(b) over the Noiles patent. Finding no argument from
appellant as to the separate patentability of dependent claims
7 and 8, and no indication of any particular limitation in
those claims which appellant believed not to be present in the
prior art Noiles patent, we concluded that those claims would
fall with independent claim 6 from which they depend, the
rejection of which we had already sustained.
As for appellant's implication that our treatment of
dependent claim 8 was somehow incomplete or improper, we do
not agree. It has been a longstanding precept in patent law
that where an applicant argues a ground of rejection with
regard to less than all of the claims to which it applies, the
unargued claims are treated as standing or falling with the
claims which were argued. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); In re Sernaker,
702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983); and In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
Appeal No. 2000-0451
Application No. 08/726,088
5
Appellant's attempt to belatedly present new arguments
directed to the examiner's rejection of claim 8 under 35
U.S.C. 102(b) as being anticipated by Noiles is unavailing,
since a new argument advanced in a request for rehearing, but
not advanced in appellant's brief, is not properly before the
Board and will not be considered. See Ex parte Hindersinn,
177 USPQ 78, 80 (Bd. App. 1971) and Ex parte Harvey, 163 USPQ
572, 573 (Bd. App. 1968) (Question not presented to Board in
appeal and not discussed by examiner is not appropriate for
decision by Board on petition for reconsideration). Note also
In re Kroekel, 803 F.2d 705, 708, 231 USPQ 640, 642 (Fed. Cir.
1986) and Cooper v. Goldfarb,
154 F.3d 1321, 1331, 47 USPQ2d 1896, 1904 (Fed. Cir. 1998)
wherein the Court noted that a party cannot wait until after
the Board has rendered an adverse decision and then present
new arguments in a request for reconsideration.
Regarding appellant's assertion (request, page 2) that
the limitation in claim 8 "is the same limitation on which the
Board patentably distinguished claim 4 from Moch," we suggest
that appellant might wish to read claims 4 and 8 again, since
Appeal No. 2000-0451
Application No. 08/726,088
6
the limitations in these two claims are clearly not the same.
The limitations of claim 4 are much more precise as to the
curvature of the superior neck of the femoral stem and the
planes involved, than the broader recitation in claim 8.
In light of the foregoing, appellant's request is granted
to the extent of reconsidering our decision, but is denied
with respect to making any changes therein.

Appeal No. 2000-0451
Application No. 08/726,088
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING DENIED
HARRISON E. MCCANDLISH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2000-0451
Application No. 08/726,088
8
RICHARD W. HANES
HANES & SCHUTZ
7222 COMMERCE CENTER DRIVE 243
COLORADO SPRINGS, CO 80919
Lesley
Appeal No. 2000-0451
Application No. 08/726,088
APJ FRANKFORT
APJ MCCANDLISH
APJ COHEN
DECISION: REHEARING DENIED

Prepared: August 20, 2002
Draft Final
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