Ex Parte Mulder et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201512076732 (P.T.A.B. Feb. 26, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HEINE MELLE MULDER, JOHANNES JACOBUS MATHEUS BASELMANS, ADRIANUS FRANCISCUS PETRUS ENGELEN, MARKUS FRANCISCUS ANTONIUS EURLINGS, HENDRIKUS ROBERTUS MARIE GREEVENBROEK, PATRICIUS ALOYSIUS JACOBUS TINNEMANS, PAUL VAN DER VEEN, and WILFRED EDWARD ENDENDIJK ____________ Appeal 2012-008927 Application 12/076,732 Technology Center 2800 ____________ Before JEFFREY T. SMITH, JAMES C. HOUSEL and GEORGE C. BEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants timely request 1 reconsideration of our Decision 2 affirming the prior art rejection of claims 1–4, 6–9, 11–18, 20, and 23–25 under 35 U.S.C. § 102(e); claim 19 under 35 U.S.C. § 103(a); and newly rejecting claims 21 and 26 under 35 U.S.C. § 103(a). 1 Request for Rehearing filed December 1, 2014 (“Request”). 2 Decision on Appeal mailed September 30, 2014 (cited henceforth as “Op.”). Appeal 2012-008927 Application 12/076,732 2 Appellants contend that the decision of the Board did not specifically address claims 2, 3, 4, 6, 7, 9, 11, 12, 13, and 18. (Request 2). As set forth in the Decision, we considered all of Appellants’ arguments and sustained the Examiner’s rejection of claims 1–4, 6–9, 11–18, 20, and 23–25 under 35 U.S.C. § 102(e) as unpatentable over Koehler. (Op. 3–4). We sustained the appealed rejection for the reasons presented by the Examiner, particularly in the Answer and Final Office Action. The Examiner specifically addressed Appellants’ arguments for claims 2, 3, 4, 6, 7, 9, 11, 12, 13, and 18 in the Response to Argument section of the Answer. As stated in the decision, “[w]e agree with the Examiner that Koehler discloses modification of the energy distribution of the illumination mode by controlling and changing the angles of the individual mirrors.” (Op. 4). The Examiner properly explained why the limitations of dependent claims 2, 3, 4, 6, 7, 9, 11, 12, 13, and 18 were not patentable over the teachings of Koehler. The proper test of a publication as an anticipatory teaching is “whether one skilled in the art to which the invention pertains could take the description of the invention in the printed publication and combine it with his own knowledge of the particular art and from this combination be put in possession of the invention on which a patent is sought.” In re Elsner, 381 F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)). In particular, in view of the publication, one must be able to make the claimed invention without undue experimentation. Elsner, 381 F.3d at 1128. Claims 1, 23 and 25 Appellants’ arguments presented in the request regarding claims 1, 23, and 25 are re-argument of Appellants’ positions that were previously Appeal 2012-008927 Application 12/076,732 3 presented in the principal brief. These arguments were considered in rendering our decision. Claims 21 and 26 Appellants’ arguments regarding the newly presented obviousness rejection of claims 21 and 26 have been fully considered but are not persuasive for the reasons set forth in the Decision. (Op. 4–5). The claims stand rejected as obvious. The absence of a disclosure of any particular step is not determinative of harmful error in a rejection for obviousness, as the issue is whether that step would have been obvious in view of the teachings of the references, even if not taught expressly. It is not disputed on the present record that Koehler discloses modification of the energy distribution of the illumination mode by controlling and changing the angles of the individual mirrors. Appellants have failed to provide technical explanation of why a person of ordinary skill in the art reviewing the disclosure of Koehler would have been incapable of controlling and arranging mirrors which are used to illuminate the circular areas. Appellants have not explained that the use of individually controllable elements for directing the illumination angle of mirrors was unknown to persons of ordinary skill in the art. Nor have Appellants directed us to evidence that the method of claims 21 and 26 produces unexpected results. CONCLUSION Based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. Appeal 2012-008927 Application 12/076,732 4 This Decision on the Request for Rehearing incorporates our Decision, mailed September 30, 2014, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). ORDER DENIED jagr Copy with citationCopy as parenthetical citation