Ex Parte Herbold

Board of Patent Appeals and Interferences

Dec 10, 2008

10910415 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL J. HERBOLD
____________

Appeal 2008-2446
Application 10/910,415
Technology Center 2600
____________

Decided: December 10, 2008
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

ON REQUEST FOR REHEARING

Appellant requests that we reconsider our Decision of August 14,
2008 wherein we sustained the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed claims 2, 3, 12, and 19-21 based on the combination of Rayne and
Workman. We have reconsidered our Decision of August 14, 2008 in light
of Appellant’s comments in the Request for Rehearing, and we find no error
Appeal 2008-2446
Application 10/910,415

therein. We, therefore, decline to make any changes in our prior Decision
for the reasons which follow.
Appellant’s arguments in the Request for Rehearing focus on the
contention that our original Decision erred in interpreting the “briefcase”
disclosed by Workman as a “simulated” article as claimed. According to
Appellant (Request 2), our original Decision mistakenly focused on the use
to which an article, such as Workman’s briefcase, is put in making our
determination that such briefcase is a simulated article. In Appellant’s view
(id.),Workman’s briefcase is a real or genuine article, regardless of the fact
that it might be used to hold GPS equipment rather than books or papers.
We do not find Appellant’s arguments to be persuasive of any error in
the conclusion reached in original decision that the Examiner properly
interpreted Workman’s disclosed “briefcase” as corresponding to the
claimed “simulated” article. We remain of the view expressed in our
original Decision (Dec. 5) that, Appellants’ arguments to the contrary
notwithstanding, the use to which an article is put is a factor in determining
whether such article is a genuine or real article or, rather, is a fake or
simulated article.
For example, Appellant’s vent pipe shaped housing article is not a
genuine vent pipe since it is not used for venting items such as harmful gases
but, rather, is used to house GPS equipment and, therefore, is a fake or
simulated vent pipe . Similarly, Workman’s “briefcase” is not a genuine
briefcase since it is not used for holding books or papers, but, rather, is a
simulated briefcase since it is used for holding a GPS unit instead.

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Appeal 2008-2446
Application 10/910,415

CONCLUSION
Based on the foregoing, we have granted Appellant’s request to the
extent that we have reconsidered our original Decision of August 14, 2008,
but we deny the request with respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

REHEARING DENIED

APJ Initials:

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