Ex Parte Langford

Board of Patent Appeals and Interferences

Sep 25, 2003

09781386 (B.P.A.I. Sep. 25, 2003)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Nathaniel P. Langford
____________
Appeal No. 2003-0188
Application No. 09/781,386
____________
ON BRIEF
____________
Before WARREN, JEFFREY T. SMITH and POTEATE, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant has filed a paper under 37 CFR § 1.197(b) requesting that we reconsider
our decision of June 20, 2003, wherein we affirmed the rejection of claims 21, 24 to 30
and 33 to 36.
Appeal No. 2003-0188
Application No. 09/781,386
1 See Answer, page 4; Brief, page 13; and Reply Brief, page 5. We also note that
Appellant has presented arguments in the rehearing request acknowledging that claim 26 was
rejected under § 102 over Williams and Struss.
2 In the body of our discussion of the rejections we included the statement “Accordingly,
we determine that the Examiner has met the initial burden of establishing a prima facie case of
unpatentability under sections 102 and 103.” (Decision, page 8).
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I.
In our previous decision, we affirmed the rejection of claims 24, 25 and 28 as
unpatentable under 35 U.S.C. § 102(b) as anticipated by Williams or Struss; claims 21,
29, 30, 33, 35 and 36 as unpatentable under 35 U.S.C. § 102(b) or in the alternative under
35 U.S.C. § 103(a) over Patel; and claims 21, 29, 30 and 34 to 36 17-18 as unpatentable
under 35 U.S.C. § 102(b) or in the alternative under 35 U.S.C. § 103(a) over Smith.
In review of our previous decision, it has come to our attention that there was an
error in the statement of the basis of rejection for claims 21, 26, 27 and 34 to 36 over the
Williams and Struss references. More specifically, the Examiner in the Answer and the
Appellant in the Briefs indicated that the claims 21, 26, 27 and 34 to 36 were rejected as
unpatentable under 35 U.S.C. § 102(b) or in the alternative under 35 U.S.C. § 103(a) over
Williams or Struss.1 Our decision properly responded to the rejection as argued by the
Appellant and the Examiner.2 We now clarify the record by indicating that we affirmed
the rejection as presented by the Examiner in the Answer and our statements in the body
of the original decision (pages 7 and 8) are correct, while the statement of the basis of
Appeal No. 2003-0188
Application No. 09/781,386
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rejection appearing in that decision is incorrect. Thus, we affirmed the Examiner’s
rejection of claims 21, 26, 27 and 34 to 36 as unpatentable under 35 U.S.C. § 102(b) or in
the alternative under 35 U.S.C. § 103(a) over Williams or Struss for the reasons appearing
on pages 7 and 8 of the original decision.
II.
37 CFR § 1.197(b) provides as follows:
Appellant may file a single request for rehearing within two months from
the date of the original decision, unless the original decision is so
modified by the decision on rehearing as to become, in effect, a new
decision, and the Board of Patent Appeals and Interferences so states.
The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked in rendering the decision
and also state all other grounds upon which rehearing is sought. See §
1.136(b) for extensions of time for seeking rehearing in a patent
application and § 1.550(c) for extensions of time for seeking rehearing in
a reexamination proceeding.
Appellant asserts that the Board’s June 20th decision is premised on a
misunderstanding of the claimed invention. (Request for Rehearing, p. 3). Specifically,
Appellant asserts that the invention of claims 21, 28, and 29-36 required adding a dust
reducing additive to an existing joint compound or wall repair compound. This is the
same argument that appears on page 18 of Appellant’s Brief. Specifically, Appellant
argued “[t]he present invention provides a method of reducing the quantity of dust
Appeal No. 2003-0188
Application No. 09/781,386
3 We note the specification, page 4, supports our position that the dust reducing additive
can be pre-mixed into the wet joint compound.
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generated by joint compounds such as those disclosed by Patel and Smith et al. by adding
to the complete and functional joint compounds a dust reducing additive.”
We responded to Appellant’s argument on pages 10 and 11 of our decision. As
stated therein, the claimed invention does not specify the time when a dust reducing
additive is incorporated into a joint compound.3
The remainder of Appellant’s arguments are not directed to specific errors in the
rejection of claims 21, 24 to 30 and 33 to 36. Appellant has not specifically identified the
basis of rejection in which our decision was based on erroneous findings of fact
concerning the prior art. Rather, we find the Appellant in essence is expressing their
disagreement with the merits of our opinion. In support of their general position,
Appellant now argues that joint compound and conventional joint compound refer to end
products. (Request for Rehearing, p. 3). The scope of this argument is unclear.
Specifically the specification, page 5, discloses that joint compound formulations include
a filler and binder material as required components. It is not clear what additional
components are required for the newly argued end product. Moreover, this issue has not
been previously presented for the Examiner’s consideration. We will not consider any
new arguments and/or new evidence which were not raised in the Brief. See 37 CFR
Appeal No. 2003-0188
Application No. 09/781,386
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§ 1.192(a) (1997)(“Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences, unless good cause is
shown.”); see also Ex parte Hindersinn, 177 USPQ 78 (Bd. App. 1971).
In summary, we have reconsidered our decision in light of all of the arguments
made in the Appellant’s request. However, we see no compelling reason justifying a
different result.
Appeal No. 2003-0188
Application No. 09/781,386
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Time for taking action
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REQUEST FOR REHEARING - DENIED
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
Appeal No. 2003-0188
Application No. 09/781,386
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