Ex Parte Graham

Patent Trial and Appeal Board

Nov 30, 2017

12653242 (P.T.A.B. Nov. 30, 2017)

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.
12/653,242 12/10/2009 Thomas Graham 139650.67 9140
7590
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
HAMILTON, FRANCES F
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
11/30/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS GRAHAM
Appeal 2016-006530
Application 12/653,242
Technology Center 3700
Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Thomas Graham (“Appellant”) filed a Request for Rehearing1
(“Request”) of the Decision on Appeal entered September 28, 2017,
(“Decision”) in this Application. The Request seeks reconsideration of the
Board’s affirmance of the rejection of claims 1, 3—7, 9, 18—20, and 23—26.
Appellant also filed a Supplemental Request,2 bringing to the Board’s
attention the holding in In re Smith Inti, Inc. 124 USPQ2d 1210, 1215
(CAFC 2017).
1 Filed on October 20, 2017.
2 Filed on November 3, 2017.
Appeal 2016-006530
Application 12/653,242
I) Kaisan-cho and Claim Construction of Claim 1
Appellant asserts that, construed consistently with the Specification, a
“resistor” is “a metallic element type that uses a low wattage, for example 4
watts at 120 volts and is called ‘flame proof’ and/or ‘sand block’ or ‘cement’
in the electronics field.” Request 2—3 (citing Spec. 7:3—14). According to
Appellant, “the Decision errs as a matter of law and as a matter of fact in
holding the wire 14 of Kaisan-cho to be a resistor as regarded by Appellant.”
Request 4.
The portion of the Specification upon which Appellant relies
describes “resistor 28” that is depicted in the embodiment of Figure 1, but
the description of the embodiment of Figure 5 indicates that “a resistor 48 is
mounted on the bracket 41 for generating and delivering heat into the
bracket 41 sufficient to melt ice thereon.” Spec. 10:3—4. The Specification
does not include additional disclosure that limits resistor 48 to be the same
type of resistor as resistor 28. Nor does the Specification include an
assertion that the term resistor as used in the present Application requires
that all resistors are the same type as resistor 28. Indeed, the portion of the
Specification cited on page 2 of the Request describes resistor 28 as “a
metallic element type,” and “[t]his type of resistor is called ‘flame proof
and/or ‘sand block’ or ‘cement’ in the electronics field.” Spec. 7:5—7.
Although the Specification sets forth terminology for the specific type of
resistor described as used for resistor 28, e.g., “metallic type,” “flame
proof,” “sand block,” and “cement,” claim 1 omits this terminology. We
decline to limit the term “resistor” in claim 1 to an embodiment described as
narrowly as the resistor 28. Rather, like the Examiner, we consider resistor
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Appeal 2016-006530
Application 12/653,242
28 to be exemplary (see Decision 5) and find that Kaison-cho’s heater line
(14) is a resistor controlled by thermostat (16) to generate and deliver heat to
a bracket, consistent with the Specification’s description of resistor 48. See
Decision 6 (discussing Kaison-cho 122). Thus, the Examiner’s
interpretation is consistent with the Specification and therefore comports
with the holding in In re Smith and the guidance provided by the Federal
Circuit on this issue.
II) Higashi-Shinagawa and “Space Therebetween ”
Claim 5 recites, in part, “a housing formed of a pair of plastic parts
secured together in mating relation to define a space therebetween,” and
Appellant argues that “the Decision does not cite to any part of the
Specification to support the interpretation of the term ‘space therebetween.’”
Request 5.
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a)(1). The Request does not identify any point believed to
have been misapprehended or overlooked by the Board. Rather, the Request
belatedly adds new arguments that could have been made in the Reply Brief.
“Arguments not raised, and Evidence not previously relied upon, pursuant to
§§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing.” Id.
Based on the issues identified by Appellant in the Appeal Brief and Reply
Brief, Appellant did not apprise us of Examiner error. See Decision 7. With
respect to the assertion that the Decision did not address whether flange 30
(alone) is a housing (Request 5), page 7 of the Final Action refers to the
combination of components 30 and 14 as “the housing,” as does page 2 of
the Advisory Action dated September 23, 2015. Page 4 of the Decision
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Appeal 2016-006530
Application 12/653,242
addresses Appellant’s substantive argument that this combination constitutes
four parts, and, therefore, “do[es] not meet the requirement of claim 5 of ‘a
housing formed of a pair of plastic parts’” (Appeal Br. 11). Thus, the
Decision addresses all the issues identified by Appellant. See Ex parte Frye,
94 USPQ2d 1072, 1076 (BPAI) (precedential) (holding that the Board
reviews a rejection for error “based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon”). Appellant’s
mere expression of disagreement with the result of the Board’s review does
not identify any point believed to have been misapprehended or overlooked
by the Board. See 37 C.F.R. § 41.52(a)(1).
As for Appellant’s contention that “bracket 13 is not mounted in the
mounting flange 30 only the frame 14 is mounted in the mounting flange 30”
(Request 7), the Request simply reiterates the argument made on pages 11—
12 of the Appeal Brief, which was addressed in our Decision (see Decision
8), and does not identify any point believed to have been misapprehended or
overlooked by the Board.
Ill) Higashi-Shinagawa and “Resistor ”
Appellant argues:
Neither the Examiner nor the Decision provides any evidence
that one skilled in the art would consider the wires (50) of
Higashi-Shinagawa to be a resistor, as regarded by Appellant, i.e.
a resistor of a metallic element type that uses a low wattage, for
example 4 watts at 120 volts and is called “flame proof’ and/or
“sand block” or “cement” in the electronics field.
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Appeal 2016-006530
Application 12/653,242
Request 8. According to Appellant, “the Decision errs as a matter of law and
as a matter of fact in holding the wires 50 of Higashi-Shinagawa to be a
resistor as claimed.” Id.
For the reasons discussed above, the Specification does not require
that a “resistor” is “a metallic element type that uses a low wattage, for
example 4 watts at 120 volts and is called ‘flame proof’ and/or ‘sand block’
or ‘cement’ in the electronics field.” Request 7—8 (citing Spec. 7:3—14).
Rather, we determine that particular type of resistor to be exemplary (see
Decision 5) and a “resistor” consistent with the Specification need only be
an element “for generating and delivering heat into the bracket [] sufficient
to melt ice thereon.” Spec. 10:3—4; see also Decision 8. Thus, as discussed
in the Decision, the Examiner determined that “Higashi-Shinagawa’s heater
wires (50) are a resistor, because they ‘generate and deliver heat into a
bracket sufficient to melt ice thereon to assure bracket mounted valve
operation,”’ and we are not apprised of error in the Examiner’s
determination. See Decision 8—9; see also Ans. 39-40.
DECISION
We grant Appellant’s Request to the extent that we have considered
our Decision in light of the points raised by Appellant, but we deny the
Request with respect to any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
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