Ex Parte Nykoluk

Board of Patent Appeals and Interferences

Nov 21, 2008

10875394 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CORY O. NYKOLUK
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Appeal 2008-1778
Application 10/875,394
Technology Center 3700
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Decided: November 21, 2008
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Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered August 4,
2008 (“Decision”), which affirmed rejections of claims 27-49 for
obviousness type double patenting, of claims 27-29, 31, 32, 34, 37-44, and
46-48 for anticipation, and of claim 33 for obviousness.

Appeal 2008-1778
Application 10/875,394

DISCUSSION
Appellant argues that the “Board improperly overlooked Appellant’s
argument, briefed in both Appellant’s appeal Brief and Reply Brief, that the
present claims present a domination issue and not an obviousness type
double patenting issue.” (Req. Reh’g 2.) Appellant therefore argues that the
Board “did not perform a proper obviousness double patenting analysis as a
matter of law (Req. Reh’g 3.) Appellant also contends that the Decision is
believed to reflect a misunderstanding of the claim language” (Req. Reh’g
5.).
Appellant argues, with regard to the anticipation issues, that “[i]t is
not believed that the claims were properly construed” (Req. Reh’g 7.)
Appellant also finds “it curious that the Board apparently agreed with
this argument in connection with the 102 rejection of claim 27 on the
Miyoshi reference alone, which was reversed, but refused to entertain the
argument in connection with the obviousness rejection of dependent claim
33” (Req. Reh’g 11.)
The essence of Appellant’s arguments is that he disagrees with the
conclusions that we reached in the Decision. While Appellant, using his
claim construction, views the obviousness type double patenting as a
domination issue, we disagree. We construe the claims as discussed in the
Decision and find that the proper relationship between the luggage in claim
14 of Nykoluk ‘077 and the towing member of the instant claims is a
species/genus relationship and the prior art species anticipates the instantly
claimed genus.
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Appeal 2008-1778
Application 10/875,394

Appellant also disagrees with our construction of the claims for the
anticipation rejection, but we specifically addressed these issues in the
Decision (Dec. 11-13) and concluded that Gold and Raynor are properly
anticipatory.
Appellant also suggests that we erred in affirming the obviousness
rejection over Miyoshi and Gold of claim 33 since we reversed the
anticipation rejection of claim 27 over Miyoshi alone. However, since we
affirmed the rejection of claim 27 over Gold alone, we clearly concluded
that Gold incorporated all of the elements of claim 27. Thus, the
obviousness issue rested on whether Miyoshi added the missing element of
claim 33 to Gold and whether, considering both Gold and Miyoshi together,
the entirety taught towards or away from the invention. We concluded that
the combination of Gold and Miyoshi rendered claim 33 obvious.
For an applicant dissatisfied with the outcome of a Board decision, the
proper course of action is to appeal, not to file a Request for Rehearing to re-
argue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
Since Appellant has not pointed out any misapprehension or error with
which we agree, we decline to revisit our earlier conclusions.
SUMMARY
We have carefully reviewed the original opinion in light of
appellant’s request, but we find no point of law or fact which we
overlooked or misapprehended in arriving at our decision.
Therefore, appellant's request has been granted to the extent
that the decision has been reconsidered, but such request is denied
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Appeal 2008-1778
Application 10/875,394

with respect to making any modifications to the decision affirming
the Examiner's rejections.
REHEARING DENIED

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PATRICK W. RASCHE
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