11498814 (B.P.A.I. Jan. 31, 2011)

Ex Parte Goodhue

Board of Patent Appeals and InterferencesJan 31, 2011

11498814 (B.P.A.I. Jan. 31, 2011)

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. 11/498,814 08/04/2006 William V. Goodhue 6762 CONT 9974 6858 7590 01/31/2011 BREINER & BREINER, L.L.C. P.O. BOX 320160 ALEXANDRIA, VA 22320-0160 EXAMINER SKURDAL, COREY NELSON ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 01/31/2011 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 WILLIAM V. GOODHUE ____________________ Appeal 2009-004344 Application 11/498,814 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, KEN B. BARRETT, and FRED A. SILVERBERG, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON REQUEST FOR RECONSIDERATION1 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 2009-004344 Application 11/498,814 2 STATEMENT OF CASE Appellant requests reconsideration of the Board’s Decision of February 23, 2010. We deny. OPINION This is a response to a Request for Reconsideration (rehearing) in the above noted appeal. Reconsiderations are limited to points overlooked or misapprehended by the panel in rendering the original Decision. Appellant’s basis for requesting reconsideration is that the Board did not give patentable weight to the preambular limitation, nor did it give weight to functional language in the body of the claim. Appellant provides a copy of claim 1 with redactions on page 6 of the Request. The redactions are said to represent portions of the claim to which the Board did not accord patentable weight. Unfortunately Appellant has disregarded one of the grounds of our Decision that was clearly expressed in the Opinion. While our Decision did state that the preambular limitation and the functional limitations were accorded little weight, our Decision emphasized that the structure of McGraw was such that it was capable of performing the functional limitations of the claim. Decision 5-6. For example, the functional limitation of the first clause of the body of the claim – the wells being sized to accommodate a shank of a respective fastener therein – does not require a fastener, and as we stated in our Opinion, Decision 6, the Examiner reasonably determined that the tray would be fully capable of performing the recited use of packaging fasteners. Likewise with respect to the attachment device, it was our finding that the Examiner reasonably found that Gosselin’s strap and buckle would be capable of being worn by or securing Appeal 2009-004344 Application 11/498,814 3 McGraw’s device to a user. Thus, while Appellant takes issue with our claim construction, he does not take issue with our other findings that the applied prior art would have been capable of performing the claimed functions. Therefore, even if Appellant’s proffered claim construction had been adopted, the claimed subject matter would not have been patentably distinguishable over the prior art. With respect to the preambular limitation, it was our legal conclusion that the body of the claim was a complete description of the structural limitations of the claimed invention. See Decision 5. Thus it was our claim construction that the preambular limitation was merely an intended use for the claimed subject matter. While we agree with Appellant that the claimed subject matter must be considered in its entirety, there is ample precedent for our Decision to hold that the preambular limitation was an intended use of the subject matter. We refer Appellant to the Principles of Law in our Decision. As the foregoing demonstrates, we have reconsidered our Decision in light of Appellant’s Request, but the Request is denied with respect to making any changes in our original Decision. This is a final Agency decision for purposes of appeal or civil action. 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)(iv). RECONSIDERATION: DENIED nlk BREINER & BREINER, L.L.C. P.O. BOX 320160 ALEXANDRIA VA 22320-0160