Ex Parte Palaoro

Patent Trial and Appeal Board

Jun 27, 2016

11813214 (P.T.A.B. Jun. 27, 2016)

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.
11/813,214 08/17/2007 Renato Palaoro 07-394 9267
34704 7590 06/27/2016
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
PRICE, CRAIG JAMES
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
06/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RENATO PALAORO
____________

Appeal 2013-009559
Application 11/813,2141
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellant has filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”), dated October 19, 2015. The Request seeks
reconsideration of a decision (hereinafter “Decision”), mailed August 18,
2015, affirming the Examiner’s rejections, under 35 U.S.C. § 103(a), of:
claims 1, 2, 4–6, and 9 as unpatentable over Matsuzawa (US
2006/0237062 A1, pub. Oct. 26, 2006), Kuypers (US 4,411,302, iss. Oct. 25,
1983), and Erickson (US 2,657,825, iss. Nov. 3, 1953); claim 3 as

1 According to the Appellant, the real party in interest is Alligator
Ventilfabrik Gmbh. Appeal Br. 2.
Appeal 2013-009559
Application 11/813,214

2
unpatentable over Matsuzawa, Kuypers, Erickson, and Brink (US 2,874,749,
iss. Feb. 24, 1959); and claims 7 and 8 as unpatentable over Matsuzawa,
Kuypers, Erickson, and Parker O-Ring Handbook (pages 4–20). We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
The Appellant contends that the Board has overlooked the meaning of
paragraph 24 of the Appellant’s Specification as it relates to the problem
faced by the inventor and that the statement in the Decision concerning
problem faced by the inventor is unfairly broad when considered in light of
the Specification. Request 1, 3. The Appellant points out that the
Specification at paragraphs 2 and 3 defines the problems faced by the
inventor, which include “over-torquing a mechanical connection which
might damage the seal” and “high requirements for evenness on a rim bore.”
Request 2–5. Moreover, the Appellant contends that the Erickson patent is
not reasonably pertinent to these problems. Request 4–5. The Appellant’s
contention is persuasive. Turning back to the Appeal Brief, the Appellant
contends that the Erickson patent is also not in the same field of endeavor as
the Appellant, which is directed to tire valves. See Appeal Br. 11–12; Reply
Br. 1. The Appellant’s contention is persuasive. See Spec., para. 1. In view
of the foregoing, we agree with the Appellant that Erickson is non-analogous
prior art because it is not from the same field of endeavor or reasonably
pertinent to the particular problem with which the inventor is involved. See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Thus, we grant the request and reverse the Examiner’s rejection of:
claims 1, 2, 4–6, and 9 as unpatentable over Matsuzawa, Kuypers, and
Erickson; claim 3 as unpatentable over Matsuzawa, Kuypers, Erickson, and
Appeal 2013-009559
Application 11/813,214

3
Brink; and claims 7 and 8 as unpatentable over Matsuzawa, Kuypers,
Erickson, and Parker O-Ring Handbook (pages 4–20).

DECISION
We REVERSE the Examiner’s decision rejecting claims 1–9.

GRANTED