Ex Parte Hui

Patent Trial and Appeal Board

Sep 19, 2016

13283366 (P.T.A.B. Sep. 19, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/283,366 10/27/2011 Jonathan Hui 37811.00.0036 1039
23418 7590
VEDDER PRICE P.C.
222 N. LASALLE STREET
CHICAGO, IL 60601
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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):
ABUFALINO@VEDDERPRICE.COM
ip_docket @ vedderprice .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN HUI
Appeal 2014-0061141
Application 13/283,366
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Request”) on November 21,
2016, of our Decision (“Decision”) mailed September 21, 2016. In the
Decision, we affirmed the rejection of claims 10-14 and 16 under 35 U.S.C.
§ 102(b) as anticipated by Borchardt2, and the rejection of claim 15 under
35 U.S.C. § 103(a) as unpatentable over Borchardt and Armstrong3. See,
e.g., Decision 8.
1 According to Appellant, “Global Packaging Solutions Limited is the real
party in interest.” Appeal Brief filed Dec. 16, 2013, (“Appeal Br.”) 1.
2 US 6,575,628 Bl, iss. June 10, 2003.
3 US 2005/0207679 Al, pub. Sept. 22, 2005.
Appeal 2014-006114
Application 13/283,366
In accordance with 37 C.F.R. § 41.52(a)(1), the Request for Rehearing
includes certain points, in particular, which Appellant believes the Board
misapprehended and overlooked in reaching its Decision to affirm the
Examiner’s rejections of claims 10—16. See Request 2—A. For the following
reasons, we deny Appellant’s Request, and, thus, we do not modify our
Decision that affirms the rejections of the claims.
ANALYSIS
Appellant’s first argument is that the Board erred because
Applicant^] by using the term “spaced separately from[,]”
referred to ... [Fjigure 1 [,] which shows the flanges being spaced
significantly below the fastener strips. Borchardt, to the
contrary, shows guiderails 139 and 143 which are positioned on
the bag walls but are positioned directly juxtaposed to the
fastener strips with the bag walls being interposed between the
fastener strips and the guide rails. The Board has considered the
Examiner’s interpretation of the claims as being reasonable, but
has not considered the drawings which are part of the
[Specification.
Request 2. Although not specifically indicated in the Decision, the Board
did consider Appellant’s Figure 1 when deciding to sustain the rejection of
claim 10. Even if we agree with Appellant that Figure 1 “shows the flanges
being spaced significantly below the fastener strips” {id.), we disagree with
Appellant that we must interpret the claim recitation “each of said flanges
being disposed parallel to said, [sic] fastener strips but spaced separately
therefrom” (Appeal Br., Claims App. (emphasis added)) as requiring that the
flanges are spaced below the fastener strips. As set forth in our Decision
(with underlining added),
Appellant does not provide a line of reasoning or point to
evidence, such as a statement in the Specification or an express
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Application 13/283,366
limitation in the claim[,] sufficient to persuade us that claim 10
requires that the flanges must be spaced above or below, as
opposed to next to, the fastening strips. Thus, based on the
foregoing, we determine that the broadest reasonable
interpretation of the claim phrase “each of said flanges being
disposed parallel to said .. . fastener strips but spaced separately
therefrom,” which is consistent with Appellant’s Specification,
includes an arrangement in which flanges are next to fastening
strips. Inasmuch as the Examiner finds that Borchardt teaches
such an arrangement, and we determine that the Examiner’s
finding is reasonable, we sustain the rejection of claim 10. See
Answer 2—3, 5. In particular, we agree with the Examiner that
Borchardt’s guide rails 139, 143 are spaced separately from
fastening strips 130, 131, as required by claim 10, because side
walls 122,123 are disposed between the guide rails and fastening
strips. See id.', see also Borchardt Fig. 4.
Decision 3^4 (underlining added). In this case, we determine that there is
lack of an express statement in Appellant’s Specification or claims, or any
other persuasive evidence, establishing that the flanges must be spaced
below the fastening strips. Thus, we determine that claim 10 is broader than
the embodiment shown in Figure 1, so that interpreting the claim to require
the arrangement argued by Appellant would impermissibly import
limitations into the claim. See, e.g., Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by . . . the written
description, it is important not to import. . . limitations that are not part of
the claim. . . . [A] particular embodiment... in the written description may
not be read into a claim when the claim language is broader than the
embodiment.”).
For reasons similar to those discussed above, we disagree with
Appellant’s argument that the Board erred because Borchardt’s “[Fjigures
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Application 13/283,366
[19-23] do not show Applicant’s present invention in which the [guide] rails
[or flanges] are spaced separately from the fastener strips,” even assuming
that Appellant is correct that certain advantages may be provided by an
arrangement in which the flanges or guide rails are disposed below the
fastening strips. Request 2.
Appellant also argues that the Board erred because, with respect to the
Board’s affirmance of the rejection of dependent claim 15,
the Board determines that the proposed combination would result
in guard rails with a substantially rectangular shape that is still
rounded. Applicant respectfully submits that you can’t have both
rounded guiderails such as in Borchardt or rectangular rails such
as in Armstrong. You must choose one or the other. The present
application specifically requires rectangular guiderails[,] which
is contrary to Armstrong.
Request 3. We are not persuaded of error, however. Claim 15 requires
flanges that are “substantially rectangular,” rather than rectangular. Appeal
Br., Claims App. Thus, Appellant’s argument that “[t]he present application
specifically requires rectangular” flanges is not commensurate with the
requirements of the claim. Further, the Examiner’s proposed combination
modifies Borchardt’s guide rails based on Armstrong, which the Examiner
determines teaches guide rails or flanges that are “substantially rectangular.”
Answer 4. Therefore, as we noted in our Decision, “[t]he Examiner
determines . . . that the proposed combination would result in guide rails
with a substantially rectangular shape that is still rounded.” Decision 6
(underlining added). Our Decision further explains why we agree with the
Examiner that the combination of references proposed in the Answer would
have been obvious in view of the teachings in the references. Id. at 7.
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With respect to Appellant’s arguments that Armstrong and Borchardt
may not be combined, and, thus, the Examiner’s proposed combination lacks
a required teaching, suggestion, or motivation, Appellant’s arguments
exceed the scope of the arguments raised in the Appeal Brief. Request 3^4;
Appeal Br. 10-11. Inasmuch as no exception applies in this case, Appellant
is not permitted to raise such arguments in a Request for Rehearing when the
arguments were not raised in the Appeal Brief, so these arguments cannot be
persuasive of error. See 37 C.F.R. § 41.52(a)(1). For example, Appellant
does not argue in the Appeal Brief that “[t]he support members of
Armstrong are part of the bag wall and not separate therefrom and could not
be removed or placed on the bag walls of Borchardt.” Request 3. By way of
another example, Appellant does not argue in the Appeal Brief that “there
would be no reason for one of ordinary skill... to put the rectangular
support elements of Armstrong into the middle of the fastener approximate
middle of the fastener strips of Borchardt [because] it would not work” or
that “[one] would have to completely reconstruct the slider of Borchardt in
order to accommodate such a support element.” Id. Instead, Appellant
argued in the Appeal Brief that the Examiner’s earlier reliance on In re
Dailey was erroneous, and that the Examiner’s rejection was deficient
because it did not resolve the level of ordinary skill in the art. Appeal
Br. 10—12.4 We note that neither the Answer nor our Decision refers to In re
Dailey. We further note that our Decision both explains why we agree that
the Examiner’s proposed combination would have been obvious regardless
of the lack of an express teaching, suggestion, or motivation (Decision 7),
We note that Appellant’s Reply Brief does not address claim 15.
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and addresses Appellant’s argument regarding the Examiner’s failure to
resolve the level of ordinary skill {id. at 8).
Based on our review of the record, including Appellant’s argument set
forth above, Appellant does not persuade us that the references as proposed
to be combined by the Examiner fail to provide the claimed “substantially
rectangular” flanges, or that the combination of references otherwise is
improper.
DECISION
Based on the foregoing, we deny Appellant’s Request for Rehearing,
except to the extent necessary to consider the Request. As a result, we
decline to modify our Decision that affirmed the anticipation and
obviousness rejections of claims 10—16.
DENIED
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