Ex Parte Haddock et al

Patent Trial and Appeal Board

Aug 14, 2017

12856827 (P.T.A.B. Aug. 14, 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.
12/856,827 08/16/2010 Robert M. M. Haddock 50200-00096 2898
25231 7590 08/16/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. M. HADDOCK
and DUSTIN MARSHALL-MASTON HADDOCK
Appeal 2016-001962
Application 12/856,8271
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 on
July 31, 2017 (“Request”), seeking reconsideration of part of our Decision
on Appeal of May 31, 2017 (“Decision”). In that Decision, we affirmed the
Final Rejection of claims 1, 3—5, and 14—18 under 35 U.S.C. § 103(a), but
reversed the Examiner’s rejection of claims 20—28 under § 103(a).
Appellants assert the affirmed portion of the Decision was in error
because “[bjased at least upon the two-prong approach suggested by the
Board in its decision in Ex parte Gunasekar, [Appeal No. 2009-008345,
2011 WL 3872007 (BPAI Aug. 29, 2011),] Appellant respectfully submits
1 According to Appellants, the real parties in interest are RMH Tech,
LLC/Metal Roof Innovations, Ltd. App. Br. 1.
Appeal 2016-001962
Application 12/856,827
that the Examiner’s rejection of claims 1, 3-5, and 14-18 should be
reversed.” Request 3. We have reconsidered our original Decision in light
of Appellants’ Request but are not persuaded of any errors. We therefore
decline to change the Decision.
ISSUES & ANALYSIS
The invention relates to “wiring clips ... for holding/retaining one or
more wires.” Spec. 24:15—19. Claim 1 recites a “second segment for each
said wiring clip extends ... in a different direction.” See Spec. Figs. 8A,
8D—8F. The Examiner found, in part, that “[a]ny particular orientation of
clips chosen to retain such wires is clearly a matter of design choice.” Ans.
18. We affirmed the Examiner’s rejection of claim 1. Decision 4—6.
In the Request, Appellants argue that “when determining whether a
rejection based on design choice is appropriate,” there is a “two-part
approach set forth by the Board in Ex parte Gunasekar.” Request 2 (quoting
in part Gunasekar, 2011 WL 3872007, at *5). According to Appellants, the
Examiner has not met the second prong of the two-part approach in
Gunasekar because “[t]he Examiner has not articulated how having a
plurality of wiring clips disposed in parallel relation to one another would
work equally as well as the configuration required by claim 1.” Id.
Appellants have not provided their basis for first raising Gunasekar or
its “design choice” test in a request for rehearing. 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).
However, “[arguments not raised, and Evidence not previously relied upon,
pursuant to §§ 41.37 [Appeal Brief], 41.41 [Reply Brief], or 41.47 [Oral
Hearing] are not permitted in the request for rehearing except” (1) “based
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Appeal 2016-001962
Application 12/856,827
upon a recent relevant decision of either the Board or a Federal Court”;
(2) “responding to a new ground of rejection designated pursuant to
§ 41.50(b)”; or (3) “that the Board’s decision contains an undesignated new
ground of rejection.” Id.
Appellants did not cite Gunasekar or its test in either the Appeal Brief
or the Reply Brief. Appellants did not request an oral hearing, so Gunasekar
was not raised there either. The decision in Gunasekar was mailed on
August 29, 2011, nearly four years before Appellants filed their Appeal
Brief, so the “recent” decision exception does not apply. The Decision was
not designated as containing a new ground, and Appellants do not allege any
undesignated new grounds, so those exceptions also do not apply.
Appellants readily concede the Examiner, not the Board, first raised
the issue of “design choice.” Request 2; Ans. 18. Thus, Appellants could
have addressed Gunasekar or its test during the initial briefing, yet did not
do so. Instead, Appellants relied on a different argument in attacking the
Examiner’s design choice, namely that “Appellant’s original specification
reveals a very different reason for disposing the various mounting clips in
different orientations” than the reason the Examiner set forth for modifying
the prior art Edwards. Reply Br. 1—2 (“nothing of this nature is addressed by
Edwards”). Our Decision addressed the argument that Appellants did make.
Decision 5—6.
A request for rehearing is not an opportunity for a party to add new
arguments it later wishes it had made in the original briefing. That is
especially true here, where the new argument is premised on a non-recent
decision that is not binding on this panel. Appellants’ remaining arguments
do not identity what, if anything, was “misapprehended or overlooked” in
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Application 12/856,827
the Board’s Decision, as required for rehearing, and instead focus on the
Examiner. See Request 3.
We also are not persuaded on the merit of Appellants’ argument that
the Examiner must show wiring clips in the same orientation would work
equally as well as different orientations. Request 2. Modifying the prior art
often involves obvious tradeoffs (e.g., cost vs. quality). See Medichem, S.A.
v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine”). Moreover, the Supreme
Court and Federal Circuit both agree obviousness may be motivated by
reasons other than the one motivating the applicant. Decision 5—6 (quoting
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007); Tyco
Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 11A F.3d 968, 977 (Fed.
Cir. 2014)). Appellants’ narrow focus on what “works better in the
estimation of the inventors” is therefore an unpersuasive argument. Request
2 (emphasis added).
DECISION
Based on the record before us now and in the original appeal, we grant
Appellants’ Request to the extent that we have reconsidered our Decision,
but we deny Appellants’ Request to make any changes in our Decision.
No time for taking subsequent action in this appeal may be extended
under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.52(b).
REHEARING DENIED
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