Ex Parte O

Patent Trial and Appeal Board

Dec 21, 2017

13286129 (P.T.A.B. Dec. 21, 2017)

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.
13/286,129 10/31/2011 James Paul O'Sullivan SR. 400085-20000 2355
25570 7590 12/26/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PAUL O’SULLIVAN, SR.
Appeal 2015-007350
Application 13/286,129
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
James Paul O’Sullivan, Sr. (Appellant) filed a request for rehearing
under 37 C.F.R. § 41.52 (hereinafter “Request”), dated November 22, 2017,
of our Decision mailed September 29, 2017 (hereinafter “Decision”). In the
Decision, we reversed the Examiner’s rejections of claim 33 under 35 U.S.C.
§§ 102(b) and 103(a) and entered new grounds of rejection for that claim
under 35 U.S.C. § 112, first and second paragraphs.
Appeal 2015-007350
Application 13/286,129
DISCUSSION
In the Decision we set forth new grounds of rejection for claim 33
under 35 U.S.C. § 112, first and second paragraphs. Decision 3—6.
Requester contests our rejection under the first paragraph of Section 112.
Request 1,3. Requester does not contest our rejection under the second
paragraph of Section 112. See generally, id.
In the Decision we determined that claim 33 is not supported by the
Specification as originally filed because the Specification does not describe
the limitation requiring the outside diameter of the washer to be less than the
compressed diameter of a golf ball during the drive off the tee. See Decision
4. We further determined that the Drawings did not provide support for this
limitations. See id.
Requester contends that “the specification makes it absolutely clear
that a golf ball, when struck off the tee, will be compressed and exactly how
much it will be compressed is not significant.” Request 2. However, this
argument is not responsive to the rejection. The basis of the rejection was
not that the Specification does not discuss compression of a golf ball.
Rather, as noted supra, the basis of the rejection is that the Specification
does not provide support for the claim limitation requiring an outer diameter
of a washer that is “less than the diameter of a golf ball when the same is
compressed during drive off the tee” as required by claim 33. Appeal Br. 3
(Claims App.). Thus, Appellant’s argument does not apprise us of error.
Requester further argues that “it can readily be determined whether an
infringing tee meets the limitation of applicant’s claim” such that the scope
of the claim can be easily determined. Request 2. However, this argument
is also not responsive to the rejection as scope of the claim is not an issue
2
Appeal 2015-007350
Application 13/286,129
under the first paragraph of Section 112. Thus, this argument also fails to
apprise us of error.1
Accordingly, we maintain the rejection of claim 33 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. As Requester does not contest our rejection under the second
paragraph of Section 112, we likewise maintain this rejection.
DECISION AND ORDER
We grant the Request to the extent that we have considered the
arguments pertaining to alleged errors in the rejection under 35 U.S.C.
§112, first paragraph, but otherwise deny the Request.
DENIED
1 To the extent that Requester intends to contest the rejection under the
second paragraph of Section 112 with this argument, we note that Requester
does not explain how one skilled in the art would be able to readily ascertain
whether a tee infringes claim 33. Instead, Requester merely argues that such
is the case. An attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Accordingly,
if Requester’s argument is directed to the rejection under 35 U.S.C. § 112,
second paragraph, it does not apprise us of error.
3