Ex Parte Lucci

Patent Trial and Appeal Board

Sep 30, 2013

12255883 (P.T.A.B. Sep. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY W. LUCCI
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Appeal 2011-004985
Application 12/255,883
Technology Center 3600
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Before: MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
HYUN J. JUNG, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellant filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request” or “Req.”), dated August 7, 2013, of our decision
mailed July 31, 2013 (hereinafter “Decision” or “Dec.”). Appellant requests
rehearing of our Decision sustaining the rejection of claims 1-12 under
35 U.S.C. § 103(a) as being unpatentable over Figure 6 of Appellant’s
Disclosure (“APA”) and US 3,589,660 to Dunckel (“Dunckel”); and the
rejection of claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over APA
and US 2,303,103 to Adams (“Adams”).
OPINION
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52. In the Decision we found that (1) both Dunckel and
Adams were within Appellant’s field of endeavor; and (2) Dunckel is
reasonably pertinent to the problem with which Appellant was involved.
Dec. 4-5. Appellant’s Request asserts error in both of these findings, i.e.,
that the Board: (1) “[b]as[ed] its determination of the ‘field of endeavor’ on
an isolated sentence in the application rather than the full disclosure of the
application and the language of [the] claims;” and (2) “[f]ail[ed] to properly
apply law from the Federal Circuit that emphasizes the importance of the
problem confronting the inventor at the time the invention was made when
determining the scope of art to be used in an obviousness inquiry.” Req. 1.
We address each of these assertions in turn.
Field of Endeavor
In the Decision we noted that Appellant’s Specification states that
“[t]he present invention relates to the field of construction,” and thus found
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that Appellant defined the field of endeavor broadly. Dec. 4 (citing Spec.,
para. [0001]). We also noted that “[n]either Appellant’s Appeal Brief nor
Reply Brief articulates the invention’s field of endeavor, much less one that
is narrower than that in the Specification.” Dec. 4-5. We therefore found
that both Dunckel and Adams fell within this broad field of endeavor.
Dec. 5. In the Request Appellant contends, first, that “the term
‘construction’ is inherently ambiguous[,] . . . not found in any of the claims
on appeal,” and would include “everything from welding to surveying.”
Req. 2. Appellant’s concern, apparently, is with the breadth of the term.
However, breadth is not the same as ambiguity. See Genzyme Corp. v.
Transkaryotic Therapies, Inc., 346 F.3d 1094, 1107 (Fed. Cir. 2003)
(holding that “[i]t is incorrect to perceive a claim term as ambiguous merely
because of its breadth”). We agree that the term is broad, and stated so in
our Decision, but disagree that it is therefore ambiguous.1 Appellant chose
this word to define the field of his invention and, in the absence of any
substantive discussion from Appellant as to what he regards as the field of
endeavor, we used this statement as the best evidence thereof.
Appellant also argues that “[t]he Board’s statement that Appellant
never defined the field of endeavor is clear error,” and cites in support of
that contention five instances in which Appellant did so. Req. 2-3. We
disagree. Our review of Appellant’s Appeal and Reply Briefs reveals that
Appellant used the term “field of endeavor” three times relevant to this

1 We do not, and need not, address the full scope of the term, or whether or
not Appellant is correct that the term encompasses welding and surveying.
For purposes of this appeal, it is only necessary that we find that brackets for
installing light fixtures (Dunckel) and brackets for installing tile (Adams)
fall within that scope.
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appeal: the first time as part of its general statement of the law concerning
analogous art (App. Br. 11); the second time – following a summary of
Adams’ teachings – as part of the conclusory statement that Adams “is n[ot]
in the present inventor’s specific field of endeavor” (App. Br. 12); the third
time – following a summary of Dunckel’s teachings – as part of the
conclusory statement that Dunckel is “clearly not within
Applicant/Inventor’s specific field of endeavor” (id.).2 Simply providing a
summary of the prior art followed by a bald conclusion – unsupported by
elaboration or explanation – that a reference is not within the Appellant’s
field of endeavor falls short of a substantive argument and is ineffective in
identifying Examiner error. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that “the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”); Ex parte Belinne, No. 2009-004693, 2009 WL
2477843, at *4 (BPAI Aug. 10, 2009) (informative) (holding that merely
restating claim language and arguing that elements are missing from
reference does not constitute a substantive argument).
Moreover, the five instances in which Appellant claims to have
discussed the field of endeavor are in fact instances in which Appellant
simply characterizes the subject matter of the claimed invention. See, e.g.,
App. Br. 6-8, 11; Reply Br. 2. Appellant did not characterize these
statements as pertaining to the field of endeavor until the Request for
Rehearing.

2 Appellant made similar statements with regard to two references that the
Examiner did not assert on appeal. App. Br. 12-13.
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Finally, even if we modified the opinion to find that Dunckel and
Adams are not within Appellant’s field of endeavor, we would still affirm
the Examiner’s rejection of the pending claims as unpatentable over APA
and Dunckel because Dunckel is reasonably pertinent to the problem with
which Appellant was involved, as we discuss infra.
Problem Confronting the Inventor
Appellant argues that the Board failed “to properly apply law from the
Federal Circuit that emphasizes the importance of the problem confronting
the inventor at the time the invention was made when determining the scope
of art to be used in an obviousness inquiry.” Req. 1. Appellant asserts in
this regard that the problem confronting the inventor “is the single most
important factor in the determination of analogous art.” Id. at 3 (citing
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309 (Fed. Cir. 1985); In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011). However, both Pentec and Klein
stand for exactly the same well-established proposition that the Board
applied in its Decision, i.e., that a reference is analogous art if it is
“reasonably pertinent to the particular problem with which the inventor is
involved.” Dec. 4 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986). See Pentec, 776 F.2d at 313 (“Those of ordinary skill in the art may
be presumed to have knowledge of arts reasonably pertinent to the particular
problem with which the inventor was involved.”) (internal citation omitted);
Klein, 647 F.3d at 1348 (prior art reference is analogous if it is “reasonably
pertinent to the particular problem with which the inventor is involved”).
Appellant goes on to argue that Dunckel is “not reasonably pertinent
to the problem confronted by the inventor” because, apparently, “the
Dunckel device is never used as a tool; it is totally inert in its ultimate use.”
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Req. 3.3 This argument was not before us prior to the Request. As stated
above, the purpose of rehearing is to provide Appellant an opportunity to
identify “points believed to have been misapprehended or overlooked by the
Board,” not to provide Appellant a second appeal. In any event, given that
Appellant does not support this conclusory statement with evidence or
technical reasoning, we are unable to find it persuasive.4
Appellant also alleges to be error the fact that the Decision does not
discuss In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), or Appellant’s
Supplemental Reply Brief, filed on June 15, 2011, which informed the
Board of the Klein decision. Req. 3-4. Appellant’s complete analysis of the
Klein decision in its Supplemental Reply Brief is as follows:
[Klein] affirms the definition of analogous art as essentially
relied on by Appellant in his Appeal Brief as well as the Reply
Brief. The Klein test disqualifies all of the references relied on
by the examiner in making the obviousness rejections. The
Examiner cannot redefine the problem addressed by the
inventor in making his invention in order to pull non-analogous
prior art into a more relevant sphere of interest.
Suppl. Reply Br. 2. We agree that Klein sets forth the well-established test
for analogous art. Klein, 647 F.3d at 1348. We disagree, however, that
Klein “disqualifies all of the references relied on by the examiner.” Klein’s
analysis finding that certain references relied on to reject Klein’s patent
claims is highly fact-specific, and does not address the claims, references or

3 Appellant makes a similar statement regarding Adams. Req. 3. However,
as stated above, we did not find that Adams is reasonably pertinent to the
problem that Appellant addressed.
4 In this regard we note that the term “tool” is not claimed, and Appellant’s
disclosure does not describe the claimed window bracket as a “tool.” In fact,
the term “tool” never appears in the disclosure.
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technology at issue here. Accordingly, the absence of any discussion by the
Board in its Decision of Klein or of Appellant’s Supplemental Reply Brief
does not justify rehearing.
DECISION
For the above reasons, Appellant’s 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED

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