Ex Parte Fischer et al

Patent Trial and Appeal Board

Aug 3, 2016

12774884 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121774,884 05/06/2010
23911 7590 08/05/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Rudolf Fischer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
037068.62332US 8982
EXAMINER
HSIAO, JAMES K
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLF FISCHER, CHRISTIAN RAFFIN,
MICHAEL PESCHEL, and FLORIAN ORGLER
Appeal2014-005089 1
Application 12/774,884
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
1 The real party in interest is KNORR-BREMSE Systeme fuer
Nutzfahrzeuge GmbH. Appeal Brief filed May 30, 2013 ("Br."), 2.
Appeal2014-005089
Application 12/774,884
STATEivIENT OF THE CASE
Appellants filed a Request for Rehearing ("Request") on July 25,
2016, of our Decision ("Decision") mailed May 23, 2016. In the Decision,
we affirmed the Examiner's rejection of claim 1-18 under 35 U.S.C.
§ 102(b) as anticipated by Halasy-Wimmer, 2 and of claims 19 and 20 under
35 U.S.C. § 103(a) as unpatentable over Halasy-Wimmer and Bourgeois.3
See Decision 2, 5.
In accordance with 37 C.F.R. § 41.52(a)(l), the Request for Rehearing
includes certain points, in particular, which Appellants believe the Board
misapprehended and overlooked in reaching its Decision to affirm the
Examiner's anticipation and obviousness rejection of claims 1-20. See
Request 1--4. For the following reasons, we deny Appellants' Request, and,
thus, we do not modify our Decision that affirms the rejections of
claims 1-2 0.
ANALYSIS
Appellants' first point raised in the Request is that the Answer
contains undesignated new grounds of rejection, and because we affirm
2 Although the Examiner relies on WO 2005/124179 Al, published
December 29, 2005, in the rejection of the claims (see Answer filed Jan. 16,
2014 ("Answer"), 2, 5), both Appellants and the Examiner agree that US
2008/0029356 Al, published February 7, 2008, "is an English-language
counterpart of the WO publication" (Br. 7; Answer 6). Further, all citations
in the Appeal Brief and the Answer are to the US publication. Thus,
throughout our Decision, all references to Halasy-Wimmer are to the US
publication.
3 EP 0 141 003 A, pub. May 15, 1985.
2
Appeal2014-005089
Application 12/774,884
those rejections, our Dec1s10n constitutes a new ground of rejection. See
Request 2-3. Rule 41.40 requires, however, that
[a ]ny request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an
examiner's answer must be by way of a petition to the Director
under § 1.181 of this title filed within two months from the entry
of the examiner's answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute
a waiver of any arguments that a rejection must be designated as
a new ground of rejection.
37 C.F.R. § 41.40 (emphasis added). Thus, Appellants waived the argument
that the Answer includes a new ground of rejection.
Appellants' second point raised in the Request is that Halasy-Wimmer
does not disclose the claimed "progressive" damping. See Request 3--4. As
we state in our Decision, "the Examiner finds that Halasy-Wimmer's
paragraph 26 describes that elastic sleeve 23, which the Examiner finds is
located as required by claim 1 and includes the claimed structural limitations
of grooves and ribs, has a predetermined progressive damping behavior. See
Answer 6-7," and that "we find that the Examiner's findings and
conclusions ... are supported by a preponderance of the evidence."
Decision 3. Although not quoted in our Decision, the portion of the Answer
we cite in our Decision further states that "[t]he claim limitations
'predetermined progressive damping behavior' have been satisfied by the
reference because the damping behavior [of Halasy-Wimmer' s device] has
been interpreted as progressive due to the shape of the grooves and ribs,
similar to Appellants[']." Answer 7. Thus, because we determined that the
Examiner's findings that "Halasy-Wimmer' s ... elastic sleeve 23 ... is
located as required by claim 1 and includes the claimed structural limitations
of grooves and ribs ... are supported by a preponderance of the evidence,"
3
Appeal2014-005089
Application 12/774,884
the Examiner's conclusion that Halasy-Wimmer' s device exhibits the
claimed "progressive" damping is reasonable. Conversely, in the Appeal
Brief, Appellants did not persuasively rebut the Examiner's conclusion. See
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO shows a
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.")
(citations omitted). Thus, we do not find error in our original decision.
DECISION
Based on the foregoing, we deny to Appellants' Request for
Rehearing, except to the extent necessary to consider the Request. As a
result, we decline to modify our Decision that affirmed the anticipation and
obviousness rejections of claims 1-20.
REHEARING DENIED
4