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

Ex Parte Johnson

Patent Trials and Appeals BoardDec 10, 2014

12011644 - (R) (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