Ex Parte Lisec

Patent Trials and Appeals Board

Mar 27, 2013

10787744 - (R) (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER LISEC
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Appeal 2011-001910
Application 10/787,744
Technology Center 3700
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Before EDWARD A. BROWN, LYNNE H. BROWNE, and
RICHARD E. RICE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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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
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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
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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
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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
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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 . . . .
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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)

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