Ex Parte Lovin et al

Board of Patent Appeals and Interferences

May 19, 2010

10924633 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFF LOVIN, ROBERT ADAMS, DAN KURUZAR,
and DIETMAR SPINDLER
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Appeal 2009-007018
Application 10/924,633
Technology Center 1700
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Decided: May 19, 2010
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.
Opinion Dissenting filed by Administrative Patent Judge KRATZ.

ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
The Appellants request rehearing under 37 C.F.R. § 41.52 of our
decision to affirm the rejection of claims 1-15, 17-24, and 30-34 under
35 U.S.C. § 103 over Benn (US 4,757,932) in view of Takagi
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(US 3,712,528) and Ludewig (US 6,362,456 B1). We have jurisdiction
under 35 U.S.C. § 6(b).
OPINION
Issue
Have the Appellants shown error our determination that claims 2-15
and 17-24 stand or fall with claim 1, and claims 31-34 stand or fall with
claim 30 (Decision 3-4)?
Analysis
A “request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board . . . are not permitted in
the request for rehearing except [for conditions not applicable here].”
37 C.F.R. § 41.52(a)(1) (2007).
The Appellants argue (Request 1-2):
The final office action does not address the limitations of the
dependent claims. Appellant pointed this out in the Brief. Appellant
cannot rebut the examiner’s position on the rejection of a claim if the
examiner has not stated his position in the office action. This is the
essence of the present issue and basis for this request for rehearing.

In the nonfinal Office action (mailed Sep. 27, 2007) and the final
Office action (mailed Mar. 6, 2008) the Examiner rejects all of the claims as
obvious over prior art references and addresses the rejected claims as a
group. In the Appellants’ response (mailed Dec. 7, 2007) to the nonfinal
Office action the Appellants do not separately argue the dependent claims.
The Appellants do not address the Examiner’s rationale in rejecting all of the
claims and explain why that rationale fails to indicate that the methods or
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systems claimed in each of the Appellants’ claims would have been prima
facie obvious to one of ordinary skill in the art.
It is not until the Appeal Brief that the Appellants separately address
the dependent claims. The Appellants assert, with respect to some claims
(dependent claims 3-7, 9-15, and 24, and independent claims 8 and 34) but
not others (dependent claims 2, 18-22 and 31-33, and independent claims 17
and 23) that the final rejection action does not explain an alleged lack of a
prior art teaching or suggestion of the claimed subject matter (Br. 12-23). 1
The Appellants, however, still do not address the Examiner’s rationale in
rejecting all of the claims and explain why that rationale fails to indicate a
teaching or suggestion of the subject matter of those claims. The Appellants
state what each claim recites and argue that there is no corresponding step in
the applied references, but the Appellants do not address the Examiner’s
rational in rejecting the claims as a group and explain why that rationale fails
to indicate that the subject matter of the claims addressed by the Appellants
would have been prima facie obvious to one of ordinary skill in the art.2 The
Appellants’ statement as to what each claim recites, followed by a statement
that there is no corresponding step in the applied references, does not
provide any substantive analysis which addresses and indicates reversible
error in Examiner’s rationale. As pointed out in our Decision (pp. 2-3), the
Appellants’ statement as to what each claim recites, followed by a statement

1 The Appellants did not take advantage of the opportunity provided by
37 C.F.R. § 182 to petition the Technology Center Director to instruct the
Examiner to separately address the claims.
2 With respect to dependent claims 31-33 the Appellants’ specifically rely
for patentability upon independent claim 30 from which they depend
(Br. 23).
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that there is no corresponding step in the applied references, is tantamount to
merely pointing out the differences in what the claims cover, and it not a
substantive argument as to the separate patentability of the claims. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
In the Examiner’s Answer the Examiner addresses 1) independent
claim 1 and its dependent claims 2-7 together, 2) dependent claims 9-15
together, 3) dependent claims 18-22, independent claim 23 and dependent
claim 24 together, and 4) independent claim 30 and dependent claims 31-33
together (Ans. 10-12). The Appellants, however, do not address the
Examiner’s rationale regarding each of those groups of claims and explain
why it fails to indicate that the subject matter of each claim in the group
would have been prima facie obvious to one of ordinary skill in the art.
Instead, the Appellants state that they do not wish to reply to the Examiner’s
Answer (Response to Examiner’s Answer filed Dec. 18, 2008).
The dissent appears to be of the view that the Appellants’ separate
recitation of what each dependent claim recites followed by an assertion of a
lack of teaching or suggestion of that subject matter in any of the applied
references is a substantive argument for the separate patentability of each
claim and should be addressed on the merits as to each claim by the Board.
Doing so would require speculation as to why the Appellants consider the
Examiner’s rationale set forth with respect to groups of claims to be
deficient as to each dependent claim, and it is not the Board’s role to provide
such speculation.
Conclusion
Thus, the Appellants have not shown error in our determination that
claims 2-15 and 17-24 stand or fall with claim 1, and that claims 31-34 stand
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or fall with claim 30. Hence, we decline to make any change to our
decision.
DECISION
The Appellants’ request for rehearing is denied.
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

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KRATZ, Administrative Patent Judge, dissenting.
I respectfully dissent from the decision reached by my colleagues
denying Appellants’ request for rehearing.
Appellants assert that the Board misapprehended or overlooked
separate arguments presented in the Appeal Brief for the patentability of
dependent claims 2-7, 9-15, 18-22, and 24, and independent claims 8 and 17
in the Decision affirming the Examiner’s rejection of claims 1-15, 17-24,
and 30-34 under 35 U.S.C. § 103 over Benn in view of Takagi and Ludewig
(Request 2 and 10).
In the Appeal Brief, Appellants furnish arguments traversing the
Examiner’s obviousness rejection with respect to dependent claims 2-7, 9-
15, 18-22, and 24 under separate headings for each claim; and Appellants
furnish arguments with respect to independent claims 8 and 17 under
separate headings for each of these claims (App. Br. 12-21). Appellants
reproduce at least some of these arguments in the request for rehearing
(Request 2-11).
For example and with respect to dependent claim 3, Appellants
furnish a brief description, including references to the subject Specification,
of what limitations they believe this claim adds to the method embraced by
dependent claim 2 from which claim 3 depends (claim 2 depends from
independent claim 1), followed by a brief additional argument directed to
claim 3 (App. Br. 12-13). Appellants assert a lack of teaching or suggestion
in any of the applied references as to the added limitation argued to be
provided by claim 3, a lack of explanation in the Office action appealed
from, and an argument asserting non-obviousness of the subject matter as a
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whole over the combined teachings of the applied references (App. Br. 12-
13; Request 2-3).
Similarly styled separate arguments traversing the Examiner’s
rejection were presented by Appellants in the Appeal Brief with respect to
dependent claims 2, 4-7, 9-15, 18-22, and 24 (App. Br. 12-21).
Upon reconsideration in light of the request for rehearing, it is my
opinion that I, together with the other panel members, misapprehended or
overlooked the separate contesting nature of the concise additional and
separate arguments presented by Appellants in the Appeal Brief with respect
to at least some of the aforementioned dependent claims, and independent
claim 8 that require separate consideration of these claims on the merits.
After all, “fewer words of explanation on appeal” are required for dependent
claims to present a separate argument for the patentability thereof. See In re
Beaver, 893 F.2d 329, 330 (Fed. Cir. 1989); see also In re Nielson, 816 F.2d
1567 (Fed. Cir. 1987). This would seem to be particularly so for claims, the
subject matter of which was not particularly addressed by the Examiner in
the Office action appealed from, as asserted by Appellants for at least some
of the separately argued claims (Request 1-2).
Of course, a panel majority could decide that some or all of the
arguments presented for dependent claims 2-7, 9-15, 18-22, and 24, and for
independent claim 8 are ineffectual, on the merits; but, that is a different
matter than a determination reflecting that separate argument has been
deemed to be waived.
Independent claim 17, however, is properly treated together with
claim 1 in the Decision based on the common argument furnished by
Appellants in the Appeal Brief not withstanding the contrary assertions in
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the Request (App. Br. 18; Request 10-11). Accordingly, it is apparent that
some of the dependent claims 2-7, 9-15, 18-22, and 24 may have been
properly considered together on this appeal record; for example, dependent
claims 2 and 18, given the commonality of the arguments made for the
respective independent claims 1 and 17, as well as the commonality of
argument presented for dependent claims 2 and 18 (App. Br. 8-12, 18, and
19).
Accordingly, it is my opinion that the Decision should be
appropriately modified to correct our determination that all of appealed
claims 2-15 and 17-24 were not substantively argued as separately
patentable and stand or fall with claim 1, and to reflect that claims, the
patentability of which were separately argued in the Appeal Brief, were
separately considered in reaching our Decision.
Thus, I do not join my colleagues in denying the request for rehearing.

PL
sld

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