Ex Parte LisecDownload PDFPatent Trial and Appeal BoardJun 28, 201310787744 (P.T.A.B. Jun. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER LISEC ____________________ Appeal 2011-001910 Application 10/787,744 Technology Center 3700 ____________________ Before EDWARD A. BROWN, LYNNE H. BROWNE, and RICHARD E. RICE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-001910 Application 10/787,744 2 STATEMENT OF THE CASE Appellant filed a Request for Rehearing (hereinafter, “Request”) in response to our Decision of March 29, 2013 (hereinafter, “Decision”) affirming the Examiner's (1) rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by Lynch (US 3,279,664, iss. Oct. 18, 1966), and (2) rejection of claims 1, 3, and 4 under 35 U.S.C. § 103(a) as unpatentable over Flueckiger (CH 626,596 A5, pub. Nov. 30, 1981), Applicant's Admission (“AA”), and Bleick (US 4,646,602, iss. Mar. 3, 1987) and/or Niven (US 4,522,096, iss. Jun. 11, 1986). We have jurisdiction under 35 U.S.C. § 6(b). OPINION Appellant contends that the Board misapprehended or overlooked two points in our Decision and presents arguments for our reconsideration. We grant the Request only to the extent that we have considered the arguments. We designate our affirmances of rejections (1) and (2) as New Grounds of Rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Point (1): Rejection (1) Regarding the rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by Lynch, Appellant contends that the Board misapprehended or overlooked the following point: Claim 1 recites . . . a ‘[p]rocess for dividing glass sheets into glass sheet shapes [according to a given dividing pattern,] in which glass sheets are divided in a first division step in one direction into glass sheet shapes, then in a second division step in a direction which is perpendicular to the first division step into glass shapes … said second Appeal 2011-001910 Application 10/787,744 3 division step being performed at the same time on a plurality of said shapes disposed in side-by-side relation.’ (Emphasis added). Thus, the process of claim 1 involves plural sheets being divided in a first division step along one direction, after which components from that first division are disposed in a side-by-side relation and simultaneously divided in the orthogonal direction. Request 2-3 (italics without underlining added). We do not agree with Appellant that claim 1 is limited to a process in which two or more glass sheets are divided in the first division step. In the absence of an express definition of a claim term in the specification, or a clear disclaimer of scope, the claim term is interpreted as broadly as the ordinary usage of the term by one of ordinary skill in the art reasonably would permit. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred embodiments described in the specification that are not recited in a claim do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Particular embodiments appearing in the written description are not read into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, the preamble language “[p]rocess for dividing glass sheets into glass sheet shapes according to a given dividing pattern” (emphasis added) does not use the term “glass sheets” to refer to the quantity of material processed at any one time in the first division step, but more broadly uses this term to refer to material processed into glass sheet shapes using the process at any or all times. The use of the term “glass sheets” in the phrase “in which glass sheets are divided,” in the body of claim 1, is consistent with Appeal 2011-001910 Application 10/787,744 4 its broad usage in the preamble. Accordingly, a person of ordinary skill in the art giving claim 1 its broadest reasonable construction consistent with the Specification would not limit the claim scope to a process in which two or more glass sheets are divided in the first division step as Appellant contends. Appellant also contends that “[t]he Decision, however, appears to have relied upon a disclosure in Lynch which is restricted to processing only a single glass sheet. In that manner, it is believed that the plural form of the word ‘sheets’ in appellant’s claim 1 was misapprehended or overlooked.” Request 3. We disagree. In the Decision, we found that Lynch depicts moving a sheet from station D to station E, thereby dividing the sheet in a first direction to produce individual pieces. Decision 4 (see also Lynch, fig. 3). We also found that Lynch discloses that the pieces are moved from station E to station F, thereby dividing the pieces in a second direction, perpendicular to the first direction. Id. at 4-5. While Lynch depicts moving a sheet from station D to station E, we do not construe claim 1 as requiring that more than one glass sheet be processed in the first division step, that is, that plural glass sheets be processed at the same time. As such, we do not agree with Appellant’s contention, as we understand it, that Lynch must disclose moving more than one sheet at the same time from station D to station E in order to meet the limitation “glass sheets are divided in a first division step in one direction into glass sheet shapes.” Appellant also contends that “by providing plural glass sheets (which, e.g., could be differently-sized) for division along one direction in the first division step, it is possible to obtain and then position differently-sized glass sheet shapes for simultaneous separation in a perpendicular direction in the second division step.” Request 4-5. Appellant appears to contend that Appeal 2011-001910 Application 10/787,744 5 Lynch is incapable of achieving this result. Id. at 5. However, Appellant acknowledges that claim 1 does not recite providing differently-sized glass sheets in the first division step, or providing differently-sized glass sheet shapes in the second division step. Id. Indeed, as discussed supra, we construe claim 1 as not requiring that plural glass sheets be divided in the first division step, regardless of whether such glass sheets may or may not be differently-sized. Moreover, Appellant’s contention appears to be directed to properties of preferred embodiments of the process. Such properties, which are not recited in claim 1, do not limit the reasonable scope of the claim. See E-Pass Techs., Inc., 343 F.3d at 1369. For the foregoing reasons, we are not convinced that we misapprehended or overlooked Appellant’s first point. Thus, we affirm the rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by Lynch. However, in order to provide Appellant with an opportunity to respond to our analysis supra, we designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b). Point (2): Rejection (2) Regarding the rejection of claims 1, 3, and 4 under 35 U.S.C. § 103(a) as unpatentable over Flueckiger, AA, and Bleick and/or Niven, Appellant contends that we misapprehended or overlooked the same point (i.e., point (1)) discussed supra in regard to Lynch. Request 6. Appellant contends: None of the foregoing citations on which the Decision was based relates to or describes a first division step which involves division of plural glass sheets, much less a second division step which performs simultaneous, perpendicular Appeal 2011-001910 Application 10/787,744 6 divisions to components resulting from that first division of the plural sheets. Id. at 7. However, as we construe claim 1 as not requiring that plural glass sheets be divided at the same time in the first division step, we do not find Appellant’s contentions persuasive. Thus, we are not convinced that we misapprehended or overlooked Appellant’s second point. Therefore, we affirm the rejection of claims 1, 3, and 4 under 35 U.S.C. § 103(a) as unpatentable over Flueckiger, AA, and Bleick and/or Niven. However, in order to provide Appellant with an opportunity to respond to our analysis supra, we designate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION Upon consideration of Appellants’ Request and for the reasons provided supra, it is ordered that the Decision affirming the rejection of claims 1, 3, and 4 shall not be modified. 37 C.F.R. § 41.50(b) provides "[a] new ground of ejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Appeal 2011-001910 Application 10/787,744 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation