Ex Parte Johnson

Patent Trial and Appeal Board

Dec 10, 2014

12011644 (P.T.A.B. Dec. 10, 2014)

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.
12/011,644 01/29/2008 Gregory Walker Johnson 6803
7590 12/11/2014
GREGORY WALKER JOHNSON
516 DAKOTA ST
DAYTON, OH 45402
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/11/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GREGORY WALKER JOHNSON
________________

Appeal 2012-005677
Application 12/011,644
Technology Center 3700
________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing (“Req. Reh'g.”) dated
September 4, 2014, under 37 C.F.R. § 41.52 of the Decision on Appeal
mailed July 10, 2014 (“Decision”), concerning the rejection of claims 35‒37,
40, 42, 44, and 48.
We do not modify our opinion.

THE REQUEST FOR REHEARING
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
Appeal 2012-005677
Application 12/011,644

2
in the briefs before the Patent Trial and Appeal Board (“Board”) and
evidence not previously relied upon in the briefs are not permitted in the
request for rehearing. See 37 C.F.R. § 41.52(a)(1). 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 seeks a rehearing to address a recording on a CD in which
Appellant and the Examiner discussed the need to address structure, not
function, in claims.1 Req. Reh'g. 1. Appellant summarizes the recording as
being informed that function “has Absolutely nothing to do with
Patentability. The Structure is what matters.” Req. Reh'g. 1. In short,
Appellant contends that the “Examiner clearly Discriminated against me”
because the recording was not played such that “[w]hat was overlooked by
the Board was the tape I sent in with my Appeal.” Req. Reh'g. 1. Appellant
thereafter identifies where both the function and the structure of the claimed
invention is described in Appellant’s Specification. Req. Reh'g. 1.
Appellant concludes that the Examiner “mislead” Appellant and seeks
redress from the Board. Req. Reh'g. 1.
Our review of the electronic record of this application reveals that the
recording was first submitted to the Office on June 20, 2011, the date on
which the Appeal Brief was filed, and, thus, was not timely filed. 37 C.F.R.
§ 41.33(d). Nevertheless, in any event, the subject matter of the recorded

1 We presume that this recording is of a conversation between Appellant and
Examiner Alissa Hoey, with the Examiner providing the instruction. Req.
Reh'g. 1.
Appeal 2012-005677
Application 12/011,644

3
conversation is indeed directed to making a distinction based on structure,
not function. Such a focus on structure is proper when addressing the
anticipation (§ 102) and the obviousness (§ 103) rejections expressed by the
Examiner. See Decision 2‒3. We understand from the recording that the
Examiner was attempting to explain the importance of distinguishing the
cited art based on structure, not function, in the claims. We will not
categorize such helpful assistance provided by the Examiner as an attempt to
“mislead” Appellant.
The Examiner also rejected all the claims under 35 U.S.C. § 112,
second paragraph, for being indefinite. Decision 2. As stated in the
Decision:
we agree with the Examiner's conclusion that claim 35 is
indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the
invention. Ans. 5‒6. Accordingly, we sustain the Examiner's
rejection of claim 35 and also dependent claims 36, 37, 40, 42,
44, and 48 under 35 U.S.C. § 112, second paragraph.
Decision 4.
In view of affirming the Examiner’s rejection of all the claims as
being indefinite under 35 U.S.C. § 112, second paragraph, the Decision
stated that the Board thereafter did not address the Examiner’s other
rejections of anticipation or obviousness
because to do so would require speculation as to the scope of
the claims. See In re Steele, 305 F.2d 859,862‒63 (CCPA
1962) (holding that the Board erred in affirming a rejection of
indefinite claims under 35 U.S.C. § 103(a), because the
rejection was based on speculative assumptions as to the
meaning of the claims).
Decision 4‒5.
Appeal 2012-005677
Application 12/011,644

4
Accordingly, Appellant’s contention that the Board erred or otherwise
misapprehended or overlooked points previously raised is not persuasive for
the simple fact that the point raised by Appellant (i.e., the recorded
conversation) pertains to the anticipation and/or obviousness rejections
which were not addressed by the Board supra. These recorded statements
do not indicate how the Board erred when the Board addressed the
indefiniteness rejection of all the claims. Since the Board affirmed the
Examiner’s rejection of all the claims as being indefinite, the Board did “not
reach the Examiner's rejections of claims 35, 36, 37, 40, 42, 44, and 48
under either 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a),” in accordance with
In re Steele. Decision 5. Accordingly, we are not persuaded to change our
Decision.
We further note a request by Appellant for “an oral hearing if I can get
one.” See Appellant’s submission dated September 4, 2014. Such request
for oral hearing is denied because it was not timely submitted “within two
months from the date of the examiner’s answer or supplemental examiner’s
answer.” 37 C.F.R. 41.47(b) (2011). The Examiner’s Answer is dated
November 23, 2011, nearly three years prior to Appellant’s request.

DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of the arguments in Appellant’s
Request for Rehearing, but is denied with respect to our making any
modification to the Decision.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal 2012-005677
Application 12/011,644

5

DENIED

mls