Ex Parte Jennings

Patent Trial and Appeal Board

Feb 13, 2017

13789803 (P.T.A.B. Feb. 13, 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 INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/789,803 03/08/2013 Mark John Jennings 83338876 2533
28395 7590 02/15/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER LEONG, JONATHAN G
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK JOHN JENNINGS
Appeal 2015-004658
Application 13/789,803
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Pursuant to 37 C.F.R. § 41.52, Appellant requests rehearing of our
Decision of November 17, 2016 (“Decision”), wherein we affirmed the
Examiner’s rejection of claims 1 and 3 under 35 U.S.C. § 103(a). See
Request for Rehearing filed January 17, 2017 (“Request”).
DISCUSSION
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. See 37 C.F.R.
§ 41.52(a)(1).
Appellant seeks a rehearing, contending that the Board
misapprehended the argument as to the disclosure of Brigham because “the
cited portions of claim 1 do not merely describe one of many disclosed
Appeal 2015-004658
Application 13/789,803
techniques [in Brigham], but rather fairly capture the extent of Brigham’s
disclosure on the topic.” Request 2. In regard to this position, Appellant
further contends that there is no evidence for Brigham suggesting that the
value of VSOC—the fuel value of SOC—is obtained in any method other
than by way of obtaining an initial estimate of the “quantity of fuel
consumed to provide the energy stored in the energy storage system” which
is “then incremented or decremented based on subsequent operating
procedures.” Request 2. On the basis that Brigham’s disclosure is so
limited, Appellant further contends that the preponderance of the evidence of
the more limited nature of the disclosure in Brigham is more compelling
than “general statements that an entirety of a reference should be evaluated
for what it would have suggested.” Request 3.
For reasons manifest in our Decision, we did not misapprehend or
overlook any point and Appellant’s position to the contrary is unfounded.
Whether or not Brigham’s disclosure is limited to the particular method set
forth in Brigham’s claim 1 was directly and squarely addressed in the
Decision. See Decision, especially pages 4-5. Having found that Brigham’s
disclosure is broader than the preferred embodiment cited by Appellant, and
that the skilled artisan would have reasonably drawn from Brigham’s
disclosure to measure the hydrogen consumed to generate the stored energy
(Decision 4-6), we find that Appellant’s contention is not persuasive of
reversible error in our Decision because it fails to address why the broader
disclosure, rather than the specific embodiment, of Brigham would not have
suggested the limitations recited in claim 1, having taken into consideration
what the skilled artisan would reasonably be expected to draw from the
reference’s disclosure.
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Appeal 2015-004658
Application 13/789,803
CONCLUSION
We have granted Appellant’s request for rehearing to the extent we
have reconsidered our Decision, but we deny Appellant’s request to make
any changes therein.
DENIED
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