Ex Parte Lenze et al

Patent Trial and Appeal Board

Apr 5, 2017

13156260 (P.T.A.B. Apr. 5, 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.
13/156,260 06/08/2011 Franz-Josef Lenze 508637 4650
53609 7590 04/07/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
04/07/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ-JOSEF LENZE, SASCHA SIKORA, and
JANKO BANIK
Appeal 2016-000312
Application 13/156,260
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This decision responds to Appellants’ March 17, 2016, Request for
rehearing (hereinafter, the “Request”) of our Decision mailed January 18,
2016 (hereinafter, the “Decision”).
Appellants correctly argue that claims 1—10 and 15—25 were subject to
appeal. Request 2. The Decision erroneously refers to claims 1—9 and 15—
25 (Decision 1) being on appeal and affirms the Examiner’s rejection with
respect to these same claims {id. at 1, 7). The error appears to have resulted
from reference to the Office Action Summary for the Examiner’s September
4, 2014, Final Rejection which erroneously states that claims 1—9 and 15—25
Appeal 2016-000312
Application 13/156,260
are rejected and that claims 10—14 are withdrawn from consideration.
Review of the Appellants’ November 14, 2014, claim amendments confirms
that only claims 11—14 were withdrawn, and Appellants correctly stated the
status of the claims in the Appeal Brief. Appeal Br. 2.
Claim 10 recites the “[mjethod according to claim 1, wherein the
component is a body part or a chassis of a motor vehicle.” Appeal Br. 12
(Claims App’x). Appellants argue that this recitation renders claim 10
allowable. Request 2. In the Appeal Brief and Reply Brief, however,
Appellants made no arguments regarding the recitations of claim 10. Rather,
Appellants only substantively argued the limitations of claim 1. Appellants
therefore waived any arguments relating to the particular recitations of claim
10. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections”)); In re Chapman, 595 F.3d 1330,
1338 (Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409
(2009) (“the burden of showing that an error is harm fill normally falls upon
the party attacking the agency’s determination.”). Because of this waiver,
the Decision appropriately treated all claims as a group consistent with the
provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2015). Decision 3 (“all other
claims on appeal stand or fall together with claim 1”).
Except for particular circumstances that do not apply here, arguments
not previously raised are not permitted in a request for rehearing. 37 C.F.R.
§ 41.52(a)(1). We therefore decline to consider Appellants’ new arguments
regarding the recitations of claim 10 at this time.
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Appeal 2016-000312
Application 13/156,260
Appellants also argue that the Decision’s statement that “[c]laim 1 is
not limited based upon the material worked on” would indicate, as stated by
Appellants, “that a limitation in this regard would render claim 1 allowable.”
Request 2 (quoting Decision 6). The statement does not provide such an
indication. Rather, our duty in this appeal is solely to review the adverse
decision of the Examiner upon Appellants’ written appeal. 35 U.S.C.
§ 6(b)(1).
For the above reasons, we clarify the Decision as affirming the
Examiner’s rejection of claims 1—10 and 15—25. The Request, however, is
denied in that we decline to address patentability arguments raised for the
first time in the Request.
DENIED
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