Ex Parte Loeb

Board of Patent Appeals and Interferences

Jul 29, 2010

11076148 (B.P.A.I. Jul. 29, 2010)

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.
11/076,148 03/09/2005 Marvin P. Loeb TDYNE-315 5889
2387 7590 07/30/2010
Olson & Cepuritis, LTD.
20 NORTH WACKER DRIVE
36TH FLOOR
CHICAGO, IL 60606
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
07/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARVIN P. LOEB
____________________

Appeal 2009-004566
Application 11/076,148
Technology Center 3700
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY
and FRED A. SILVERBERG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004566
Application 11/076,148

2
The Appellant has filed a “Request for Rehearing Under 37 C.F.R. 1
41.52(a)(1)” [“Request”]. The Request seeks reconsideration of our 2
Decision of January 19, 2010 [“Decision”] affirming the Examiner’s 3
decision finally rejecting claims 14 and 20 under 35 U.S.C. § 102(e) as 4
being anticipated by Goldsmith (US 2005/0119657 A1, publ. Jun. 2, 2005); 5
finally rejecting claims 1, 2 and 4 under § 102(e) as being anticipated by 6
Muhanna (US 2003/0195624 A1, publ. Oct. 16, 2003); and finally rejecting 7
claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Muhanna and 8
Ritland (US 6,966,910 B2, issued Nov. 22, 2005). We have jurisdiction 9
over the Request under 35 U.S.C. § 6(b). 10
The Appellant presents four points which the Appellant contends we 11
have misapprehended or overlooked. We deny the Request as to points 1 12
and 4. We grant the Request to the extent that we have considered the 13
arguments relating to points 2 and 3 but otherwise deny the Request. 14
The Appellant contends that we misapprehended or overlooked the 15
Appellant’s argument that Goldsmith fails to disclose “at least one member 16
whose center portion is flexible” as purportedly recited in claim 14. 17
(Request 1.) We did not misapprehend or overlook this point. Claim 14 18
does not recite “at least one member whose center portion is flexible.” The 19
Appellant did not make this argument in the Appeal Brief and, consequently, 20
waived reliance on the point in this appeal. See 37 C.F.R. § 41.37(c)(1)(vii). 21
The Appellant contends that we misapprehended or overlooked the 22
Appellant’s argument that the meaning of the term “malleable” is opposite 23
the meaning of the term “flexible.” (Request 2.) We did not misapprehend 24
or overlook this point. Instead, we addressed the point at page 5, line 20 – 25
page 6, line 5 (Findings of Fact 7 and 8) and page 6, line 21 – page 7, line 10 26
Appeal 2009-004566
Application 11/076,148

3
of the Decision. In the interest of offering the Appellant a full hearing of the 1
Appellant’s contentions, we take Official Notice of the definition of the term 2
“malleable” belatedly filed with the Request (Request 2, Exhibit B.). After 3
reconsideration in view of the record as a whole including the belated 4
definition, we adhere to the finding that the ordinary usage of the term 5
“flexible” is sufficiently broad to encompass malleability. (See Decision 7.) 6
The Appellant contends that we misapprehended or overlooked the 7
teaching in paragraph 0024 on page 2 of Muhanna that the arcuate bend in 8
Muhanna’s ligament 300 “will become increasingly stiffer with a higher 9
tension load.” The Appellant contends that this teaching belies the 10
Examiner’s finding that Muhanna’s ligament 300 includes “at least one 11
member whose center portion is flexible.” (Request 2.) We did not 12
misapprehend or overlook this point. The Appellant failed to raise the point 13
in the Appeal Brief and, consequently, waived reliance on the point in this 14
appeal. See 37 C.F.R. § 41.37(c)(1)(vii). Even had the Appellant timely 15
raised the point, our decision would have been unchanged. The possibility 16
that Muhanna’s ligament 300 might stiffen with a higher tension load does 17
not imply that the ligament lacks a flexible center portion, at least in a state 18
in which the ligament is not tensioned. 19
The Appellant contends that we misapprehended or overlooked a 20
perceived requirement to make express findings regarding the level of 21
ordinary skill in the art. (Request 2.) We did not misapprehend or overlook 22
this point. Instead, we addressed the point at page 9, lines 6-19 of the 23
Decision. 24
Appeal 2009-004566
Application 11/076,148

4
DECISION 1
We deny the Request as to points 1 and 4. We grant the Request to 2
the extent that we have considered the arguments relating to points 2 and 3 3
but otherwise deny the Request. 4
5
DENIED 6
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mls 13
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OLSON & CEPURITIS, LTD. 17
20 NORTH WACKER DRIVE 18
36TH FLOOR 19
CHICAGO, IL 60606 20