Ex Parte Hildebrand

Patent Trial and Appeal Board

Nov 18, 2016

11607084 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/607,084 12/01/2006
23117 7590 11/22/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Rudolf Hildebrand
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.
265-200 7192
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
11/22/2016 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@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLF HILDEBRAND
Appeal2014-005184
Application 11/607,084 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered August 8, 2016
("Decision"), which, inter alia, affirmed the Examiner's rejection of claims
1-11 and 14--19 as unpatentable over Ohno. 2 Appellant contends that we
"committed error by shifting the burden to [Appellant] to show why it would
not have been obvious to modify Ohno to include the particular claimed
structural relationship between the plug connector and other elements" of the
1 According to Appellant, the real party in interest is Kathrein-Werke KG.
Appeal Br. 1.
2 Ohno et al., US 2006/0038729 Al, pub. Feb. 23, 2006.
Appeal2014-005184
Application 11/607 ,084
claims. Req. Reh'g 4 (emphasis omitted). We find no point of law or fact
that we overlooked or misapprehended in arriving at our Decision.
DISCUSSION
Appellant argues that we erred in our Decision because we:
placed the burden upon applicant to respond to contentions the
Examiner never made as to HOW to structurally modify Ohno to
use a plug connector, in particular to obtain a structure in which
(1) the plug connector is arranged wholly or partially in a region
of the fitting opening, and (2) the screw head applying pressure
to the tensioning structure is further structured to be located
closer to the fitting wall than the insertion plane defined by the
insertion opening of the at least one plug connector.
Req. Reh'g 4--5. Additionally, Appellant argues:
there is no basis on this record supporting a conclusion that if
Ohno' s structure were modified to include a plug connector, it
would have been obvious under 35 USC 103 to provide the screw
head applying pressure to the tensioning structure being further
structured to be located closer to the fitting wall than the insertion
plane defined by the insertion opening of the at least one plug
connector.
Id. at 5. Appellant concludes that there was no prima facie case of
obviousness presented with respect to Ohno alone, and thus, our Decision
should have reversed "the rejection on that basis instead of insisting on an
incorrect legal standard that turns 35 USC 103 upside down." Id. at 7.
For the reasons discussed below, we are not persuaded of error in our
Decision.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to Appellant. See
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Appeal2014-005184
Application 11/607 ,084
Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. Id.
Our reviewing court has set forth the following standard for
determining the sufficiency of an Examiner's rejection:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
That section "is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter
the grounds for rejection."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original).
Further, an Appellant may attempt to overcome an examiner's
obviousness rejection on appeal to the Board by: (A) submitting arguments
and/or evidence to show that the examiner made an error in either (1) an
underlying finding of fact upon which the final conclusion of obviousness
was based or (2) the reasoning used to reach the legal conclusion of
obviousness; or (B) showing that the prima facie case has been rebutted by
evidence of secondary considerations of nonobviousness. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
In our Decision, we found that the use of a plug connector Ohno
would have been obvious for the reasons provided by the Examiner. See
Decision 5. We also found that the Examiner provided a sufficient basis to
conclude that Ohno teaches or suggests each element of the claims. Id. at 5-
6. In particular, our Decision was not only based on the Examiner's finding
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Appeal2014-005184
Application 11/607 ,084
that it would have been obvious to use a plug connector in Ohno, but it was
also based on the Examiner's findings regarding the relationship of parts in
Ohno's device, including the Examiner's findings regarding Ohno's
connector, defined as elements 14 and 1 Oa by the Examiner. Thus, the
Examiner met the burden of establishing a prima facie case of obviousness.
As noted above, once a prima facie case was established, the burden of
coming forward with evidence or argument shifted to Appellant. As such
we are not persuaded that the Decision erred in shifting the burden to
Appellant to produce arguments or evidence showing error in the rejection
or to produce evidence of secondary considerations. See Ex parte Frye, 94
USPQ2d at 107 5.
Further, in our Decision, we found that the arguments and evidence
presented by Appellant in response to this prima facie were not sufficient to
show error in the Examiner's findings or conclusions. Appellant's
arguments regarding the sufficiency of the prima face case, raised for the
first time here, are untimely. See 3 7 CPR § 41. 5 2.
CONCLUSION
We have carefully reviewed the original Decision in light of
Appellant's request, but we find no point of law or fact that we overlooked
or misapprehended in arriving at our decision. Therefore, Appellant's
request for rehearing is denied.
DENIED
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