12867290 (P.T.A.B. Dec. 29, 2017)

Ex Parte Jenkins

Patent Trial and Appeal BoardDec 29, 2017

12867290 (P.T.A.B. Dec. 29, 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 12/867,290 08/12/2010 Robert L. 27569 7590 01/03/2018 PAUL AND PAUL 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. Jenkins 2010-084 8987 EXAMINER KWIECINSKI, RYAN D ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 01/03/2018 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): INFO @PAUL ANDPAUL.COM claire @paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT L. JENKINS Appeal 2015-007772 Application 12/867,290 Technology Center 3600 Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2015-007772 Application 12/867,290 STATEMENT OF THE CASE In response to our Decision on Appeal dated September 1, 2017 (“Decision”), in which we affirmed the rejection of claims 1 and 3—15 under 35 U.S.C. § 103(a), Appellant Robert L. Jenkins1 filed a Request for Rehearing on November 1, 2017 (“Request”). We have reviewed the Decision in light of Appellant’s arguments but, for the reasons given below, we decline to change the Decision. DISCUSSION A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board (“Board”)].” See 37 C.F.R. § 41.52(a)(1). Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” Id. Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Appellant contends that the Board erred for four reasons. First, Appellant argues that “the Board has fundamentally misunderstood the legal precedent established by [In re Thorpe, 111 F.2d 695 (Fed. Cir. 1985)]. 1 According to Appellant, Certain Teed Corporation is the real party in interest. App. Br. 1. 2 Appeal 2015-007772 Application 12/867,290 Request 2. According to Appellant, Thorpe requires the Examiner to show “that the ‘molded synthetic’ process limitation [in the pending claims on appeal] does not impart any structural difference to the claimed roofing product compared to the applied prior art.” Id. Appellant argues that because the Examiner failed to provide any reasoning that would support a finding that the “molded synthetic” process limitation does not impart any structural difference to the claimed roofing product, the Examiner has not made out a prima facie showing of obviousness and cannot shift the burden to the Applicant to prove a structural distinction resulting from the claimed process limitation. Id. at 3. We disagree. In Thorpe, the “examiner compared the product of the prior art, and the product of Thorpe’s process . . ., in accord with standard examination practice, noting the similarity of reactants, reaction conditions, and properties.” Thorpe, 111 F.2d at 697—98. Similarly, the Examiner here correctly compared the molded shingle to prior art shingles and found no differences. See, e.g., Final Action, dated July 17, 2014, at 2-4, 14—15; Answer, dated June 24, 2015, at 2—3. Thus, as stated in the Decision, the Examiner shifted the burden to Appellant to come forward with evidence or argument to demonstrate why the recited method of manufacture results in a structural difference in the claimed product as compared to the prior art. See Thorpe, 111 F.2d at 698. As stated in the Decision, Appellant did not do so. Decision 4—5. The Board cannot overlook or misapprehend arguments not made. Second, Appellant, for the first time, makes the belated argument that “the weight of the evidence in the record shows that the claimed process limitation results in a structural difference from the applied art.” Request 3. 3 Appeal 2015-007772 Application 12/867,290 According to Appellant, the prior art’s asphalt “shingles are made with a felt or paper bonded with asphalt or tar and covered with granules on the top surface” and “[tjhese shingles are thin and flexible [] and would therefore be structurally different from the claimed roofing product of the present application, which would be made of a different material and would be relatively more rigid based on its greater thickness, weight, and the material of its construction.” Id. Because this new argument could have been presented in the Appeal Brief to rebut the rejections in the Final Office Action (dated July 17, 2014), thus affording the Examiner an opportunity to consider and respond to it, the argument is untimely. See 37 C.F.R. § 41.52(a)(1); see generally Ex part Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (The Board is not required “to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Third, Appellant argues the Board misapprehended the meaning of “single tab portion.” Request 3^4. According to Appellant, “the only interpretation of single tab portion that is consistent with the [Specification is that it means a single tab.'” Id. at 4 (emphasis added). Appellant’s argument is identical to the arguments in the Appeal Brief and Reply Brief. Appellant is merely rehashing arguments already made and expressly considered. The Board did not overlook or misapprehend Appellant’s argument, but found it unpersuasive. Finally, Appellant argues the Board misapprehended the argument regarding the “placement indicators” limitation. Request 4. Appellant is merely rehashing arguments already made and expressly considered. Appellant does not address the ruling that the placement indicators are non- 4 Appeal 2015-007772 Application 12/867,290 functional printed matter. See Decision 8—11. The Board did not overlook or misapprehend Appellant’s argument, but found it unpersuasive. DECISION Appellant’s Request for Rehearing is granted to the extent that we reconsidered the Decision. It is denied with respect to making any changes to the Decision. The Examiner’s rejections of claims 1 and 3—15 remain AFFIRMED. DENIED 5