Ex Parte Gardner

Board of Patent Appeals and Interferences

Sep 29, 2010

11900462 (B.P.A.I. Sep. 29, 2010)

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.
11/900,462 09/10/2007 Conrad Oliver Gardner 95-004 Cont. 2994
7590 01/28/2011
CONRAD O. GARDNER
BOX 1359
BLAINE, WA 98231
EXAMINER
YEAGLEY, DANIEL S
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
01/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CONRAD OLIVER GARDNER
____________________

Appeal 2010-009078
Application 11/900,462
Technology Center 3600
____________________

Before JOHN C. KERINS, MICHAEL W. O’NEILL and
FRED A. SILVERBERG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009078
Application 11/900,462

2
Conrad Oliver Gardner (Appellant) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of
our Decision dated September 30, 2010 (“Decision”) affirming the rejection
of claims 1 and 5-13 under 35 U.S.C. § 103(a) as unpatentable over Ellers
(US 4,923,025, issued May 8, 1990) in view of Sprague (US 3,615,829,
issued October 26, 1971). Appellant asserts that we have misapprehended or
overlooked one or more points that pertain to the rejection. We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
Appellant first argues that the principal reference to Ellers fails to
suggest the claim limitation requiring a logic control circuit to be
“responsive to vehicle speed and accelerator pedal information.” (Request
2). This argument fails to establish that we overlooked or misapprehended
any points that were argued on appeal. The argument simply was not made
by Appellant in the Appeal Brief filed February 16, 2010, or in the Reply
Brief filed April 29, 2010. “Arguments not raised in the briefs before the
Board . . . are not permitted in the request for rehearing except as permitted
by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R. § 41.52(a)(1).
Appellant has not shown good cause as to why this new argument is entitled
to consideration under 37 C.F.R. § 41.52(a)(2) (discussed below), and 37
C.F.R. § 41.52(a)(3), directed to new grounds of rejection, does not apply.
We are also not persuaded, even considering the new argument, that
the argument has merit. The Ellers patent, in columns 2 and 3 (as cited by
the Examiner, see Answer 3-4), and particularly in the paragraph starting at
column 3, line 59, appears to disclose that the logic circuit is responsive to
vehicle speed and accelerator pedal information.
Appeal 2010-009078
Application 11/900,462

3
Appellant further contends that “the Examiner… has not stated why it
would be obvious in rejecting [the claims on appeal] to modify the battery
charging circuit of Ellers for lead acid batteries to provide transfer of power
to a fast charge-discharge battery as claimed in claim 1.” (Request 3). Not
only was this argument not previously made in the Appeal Brief or Reply
Brief, the argument misstates the record. The Examiner presented reasons at
each of pages 4, 5 and 6 of the Examiner’s Answer as to why it would have
been obvious to modify the Ellers device in view of the disclosure in
Sprague. We are not persuaded that we have here misapprehended or
overlooked one or more points.
Appellant challenges, for the first time, one of the Examiner’s
findings with respect to the battery type disclosed in Ellers, and further that
Ellers teaches away from the proposed modification of Ellers, on the basis
that the modification would undermine the operation or purpose of the Ellers
device. (Request 3-4). Appellant also weaves into this challenge a reprise
of the argument, directed to the Sprague patent discussed in Appellant’s
Specification and combined with Ellers in the rejection, that “it is wrong to
use what the inventor alone has taught against its teacher.” (Request 3).
A Request for Rehearing is not a vehicle to raise arguments that could
have been raised, but were not, in the briefings prior to a Board decision. As
to the latter argument, which is in the nature of an argument that
impermissible hindsight reconstruction was employed in formulating the
rejection, we did not previously misapprehend or overlook the argument,
rather the preponderance of the evidence and the lack of any persuasive
challenge to the Examiner’s articulated reason to combine the teachings
caused us to arrive at the decision to affirm the rejections.
Appeal 2010-009078
Application 11/900,462

4
Appellant maintains that “there is no close prior art” and that, were
our decision to be appealed, “the reviewing Court would entertain argument
that the evidence of pioneering invention is relevant to the patentability of
the application claims”. (Request 4). We will not speculate as to what our
reviewing Court might or might not do with respect to arguments directed to
the applicability of a theory that pioneer invention status is relevant to the
propriety of the rejections at hand. We do note, as we alluded to in the
Decision, that we are unaware of any precedent that suggests any such
connection. Furthermore, Appellant conceded at oral hearing that, “… I did
present an argument about pioneer status in my case, and I realize that it’s
had nothing to do with 103.” (Transcript of Oral Hearing, September 16,
2010, p. 10, ll. 4-5).
Appellant additionally asserts that our finding that there was a lack of
evidence that the claims on appeal would be regarded as pioneer inventions
is incorrect. (Request 7). Appellant contends that the system disclosed in
his earlier patents and in the present application are the same, thus evidence
of numerous citations to those earlier patents evidences pioneering status of
the claimed invention. The reasons why earlier patents end up being cited in
later applications that issue as patents are myriad. Appellant has done
nothing beyond presenting the results of an online database search for
patents that cite to, for whatever reason, his earlier patents. This alone is not
probative of pioneering status, nor of nonobviouness of the claims on appeal.
Appellant points out, with respect to claims 5 and 6, that there is a
difference between the claims and Ellers in terms of the speed at which the
internal combustion engine will be operated by the logic control circuit.
(Request 5). The Decision devotes one-and-one-half pages (Decision 6-7) to
Appeal 2010-009078
Application 11/900,462

5
this issue, and we are not persuaded that we have misapprehended or
overlooked the point raised by Appellant in the Request.
Appellant appears to be contending that the Examiner and we have
made findings that “a complete redesign of the Ellers system is necessary” in
“force fit[ting] of a fast charge-discharge battery into the Ellers [system]”.
(Request 6). No such findings have been made by the Examiner, nor in our
Decision.
Appellant also seeks to have us reconsider the evidence of secondary
considerations relied on by Appellant. (Request 6-7). Appellant has not
persuasively shown that we either misapprehended or overlooked such
evidence, which we addressed in detail in the Decision. (Decision 7-10).
Appellant’s final contention is that:
[t]here is not a shred of evidence . . . that the cited
references contain detailed enabling methodology
for practicing the claimed invention, a suggestion
to modify the prior art to practice the claimed
invention, and evidence to suggest it would be
successful as required by the Kubin court, In re
Kubin, 561 F.3d 1351 (Fed. Cir. 2009 confirming
the court’s holding in O’Farrell, as reinvigorated
by the court in KSR, KSR Int’l Co. v. Telex [sic,
Teleflex], Inc, 127 S.Ct. 1727 (2007).
(Request 7-8).
The Kubin case is apparently cited as justification for presenting new
arguments in the Request. (See Request 1). However, principles involving
the concepts of enabling disclosure of a reference, of suggestion to modify a
prior art device, and of having a reasonable expectation of success in making
such a modification, are not newly set forth in the Kubin decision, nor has
Appellant attempted to establish that Kubin includes any discussion or
Appeal 2010-009078
Application 11/900,462

6
holding that would have an outcome-changing effect on the issues presented
in this appeal. As such, Appellant has not shown good cause, as is required
under 37 C.F.R. § 41.52(a)(2), for presenting any new argument in this
Request.

DECISION
The Request for Rehearing has been fully and carefully considered,
and is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

mls

CONRAD O. GARDNER
BOX 1359
BLAINE, WASHINGTON 98231