Ex Parte Hall

Patent Trial and Appeal Board

Sep 16, 2016

13422265 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/422,265 03/16/2012
16464 7590 09/19/2016
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
FIRST NAMED INVENTOR
Charles E. Hall
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.
10484-36 5941
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3728
MAILDATE DELIVERY MODE
09/19/2016 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 CHARLES E. HALL
Appeal2014-003649
Application 13/422,265 1
Technology Center 3700
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
The Appellant filed a Request for Rehearing, dated August 30, 2016,
of the Decision on Appeal, dated June 30, 2016 ("Decision," herein), which
affirmed the rejection of claims 1-21under35 U.S.C. § 103(a). We have
jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b ).
ANALYSIS
The Appellant argues that the Request for Rehearing should be
granted, alleging that the Decision does not identify evidence supporting the
1 According to the Appellant, Buddeez, Inc. is the real party in interest.
Appeal Br. 2.
Appeal2014-003649
Application 13/422,265
finding that Panchal teaches "concave groove surface sections" and "convex
rib surface sections." Req. Reh'g 2.
The supporting evidence (Panchal i-fi-136-38, Fig. 1) is identified in
relation to the assessment of the Examiner's finding:
We are not persuaded by Appellant's arguments because
the Examiner's finding that Panchal teaches "concave groove
surface sections" and "convex rib surface sections" is supported
by a preponderance of the evidence. As stated in the Final
Action, Panchal' s interlocking portions 16 and 16a meet the
limitation of "concave groove surface sections," and Panchal' s
interlocking portions 14 and 14a meet the limitation of "convex
rib surface sections." Final Action 3, 4 (citing Panchal i-fi-136-
38, Fig. 1 ).
Decision 4.
Although this passage quoted from the Decision discusses only the
claimed "concave groove surface sections" and "convex rib surface
sections," the Decision later addresses the obviousness of the claim 1 's
(emphasis added) side surfaces having "a plurality of concave groove
surface sections" "having widths that are arranged side by side" and "a
plurality of convex rib surface sections" "having widths that are arranged
side by side":
Under the Examiner's interpretation of Panchal, we agree
with the Appellant that each of Panchal's side surfaces has only
one "concave groove surface section" (elements 16 and 16a of
Panchal's Figure 1) or one "convex rib surface section"
(elements 14 and 14a of Panchal' s Figure 1 ), such that Panchal
lacks claim 1 's side surfaces having "a plurality of concave
groove surface sections" "having widths that are arranged side
by side" or "a plurality of convex rib surface sections" "having
widths that are arranged side by side." Appeal Br. 10.
Yet, the Examiner correctly concludes that it would be
obvious to have a "plurality" of the "concave groove surface
2
Appeal2014-003649
Application 13/422,265
sections" or the "convex rib surface sections" on a respective
"side surface," as a mere duplication of such parts for a
multiplied effect. (Final Action 4 (citing St. Regis Paper Co. v.
Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977)). "It is well
settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced."
In re Harza, 274 F.2d 669, 671(CCPA1960). No evidence has
been provided as to any unexpected results flowing from the
recited "plurality" of these features in claim 1.
Decision 4--5.
The Appellant also argues that the Request for Rehearing should be
granted because the Decision did not include a "discussion of the
Examiner's failure to provide documentary evidence to support the
Examiner taking 'Official Notice of the equivalence of dovetails and
concave groove and convex rib surface sections for the use in interlocking
art."' Req. Reh'g 2.
This aspect of the Request for Rehearing relates to an alternative
position presented by the Examiner. See Final Action 4; Answer 8-9. As
explained in the Decision (and as discussed above), because we agreed with
the Examiner's finding that Panchal teaches "concave groove surface
sections" and "convex rib surface sections," we need not address the
Examiner's alternative position. Decision 4.
DECISION
The Appellant's Request for Rehearing has been granted to the extent
that the Decision has been reconsidered in light of the Appellant's Request
for Rehearing, but is denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
3