Ex Parte Price et al

Patent Trial and Appeal Board

Sep 16, 2016

11699497 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111699,497 01/30/2007
21839 7590 09/20/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Shane Price
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1021238-000738 7045
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE PRICE, EVGENI SYCHEV, MARC D. BELCASTRO,
and JEFFREY A. SWEPSTON
Appeal2014-005026
Application 11/699,497 1
Technology Center 3700
Before STEFAN STAICOVICI, AMANDAF. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARil...JG
Shane Price et al. (Appellants) timely filed a Request for Rehearing
("Request") under 37 C.F.R. § 41.52 on August 17, 2016 requesting that we
reconsider our decision of June 1 7, 2016 ("Decision") affirming the
rejections under 35 U.S.C. § 103(a) of claims 1-7, 9-11, 15, 16, 20, 22, and
23 as unpatentable over Nichols (US 6,568,390 B2, iss. May 27, 2003) and
Toss (US 6,134,387, iss. Oct. 17, 2000); of claims 12-14 and24 as
unpatentable over Nichols, Toss, and Cox (US 2004/0050383 Al, pub. Mar.
1 According to Appellants, the real party in interest is Philip Morris USA
Inc. Appeal Br. 2 (filed Oct. 24, 2013).
Appeal2014-005026
Application 11/699,497
18, 2004); and of claim 19 as unpatentable over Nichols, Toss, and Baran
(US 2004/0084050 Al, pub. May 6, 2004).
Rehearing is limited to matters overlooked or misapprehended by the
Board in rendering the initial decision.
In the Reply Brief (filed Jan. 21, 2014), Appellants argue that Toss
does not teach or suggest a single outlet along a bend, but rather teaches
outlets along a straight, intermediary region of the U-shaped tube body. See
Reply Br. 6-7. In our Decision, we did not consider Appellants' argument,
as Appellants offered no good cause as to why the argument was not raised
in the Appeal Brief. See Decision 6-7; see also 37 C.F.R. § 41.41(b)(2)2.
Appellants now argue that "the Patent Trial and Appeal Board
(hereinafter 'Board') erred in failing to consider Appellants' argument that
the claim feature of a single outlet along the bend or arcuate portion is
missing from the prior art." Request 2. According to Appellants, the
argument was raised on pages 7-8 of Appellants' Appeal Brief (see id.) and
also in response to the Examiner's Answer (transmitted Nov. 21, 2013),
which stated on page 13:
Appellant also argues on pages 8-9 that Toss teaches
discharging through a plurality of outlets. However, examiner
disagrees because Toss teaches an embodiment in which there
is only one outlet (Col. 1, 11. 60, Col. 4, claim 2).
2 "Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer ... will not be considered by the Board for purposes of the present
appeal, unless good cause is shown."
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Appeal2014-005026
Application 11/699,497
Request 3. In response to the Examiner's Answer, Appellants stated that,
"Toss includes a multitude of outlet openings 16 on a straight intermediary
region." Reply Br. 6 (citing Toss, col. 2, 11. 38--43). Appellants further
stated that, "the gas exit openings of Toss extend crosswise or parallel to the
longitudinal axis of the tube rather than along the bend as recited in the
claimed device." Id. at 6-7 (citing Toss, col. 2, 11. 1---6).
Based on the statement noted above in the Examiner's Answer
regarding Toss's outlets, we find Appellants' statements in the Reply Brief
to be "responsive" to an argument raised in the Examiner's Answer, and
thus, Appellants' contentions are persuasive. Accordingly, we grant
Appellants' Request to address the argument that the cited prior art fails to
disclose a single outlet along a bend (as per claims 1, 7, 11, and 23) or an
arcuate portion (as per claim 20) of a single, unitary capillary tube.
The Examiner finds that although Nichols fails to disclose a single,
unitary capillary tube having at least one bend and a single outlet along the
bend, nonetheless, Toss discloses a single unitary tube 10 with two ends 12,
14, first and second bends, and a single escape opening 16. See Final Act.
2-3 (transmitted May 22, 2013). However, Appellants are correct in that
Toss's outlets 16 are located "on a straight intermediary region" ofU-shaped
body 10. Request 4; see also Reply Br. 6. We further agree with Appellants
that because Toss also discloses slot-shaped openings 16 that "extend
crosswise or parallel to the longitudinal axis of the tube," Toss's openings
"extend crosswise or parallel to the longitudinal axis of the tube rather than
along the bend." Request 5 (emphasis omitted); see also Reply Br. 6.
Accordingly, Appellants are correct in that as Toss fails to disclose at least
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Appeal2014-005026
Application 11/699,497
one outlet opening along its first and second bend portions, "Toss cannot
possibly cure the deficiencies of Nichols." Id. at 4. Furthermore, the
Examiner's use of the teachings of Cox and Baran likewise fail to cure the
deficiencies of Nichols and Toss as discussed supra. See Final Act. 9-11.
In conclusion, for the foregoing reasons, we grant Appellants'
Request. We also vacate our decision to sustain the rejections under 35
U.S.C. § 103(a) of claims 1-7, 9-11, 15, 16, 20, 22, and 23 as unpatentable
over Nichols and Toss; of claims 12-14 and 24 as unpatentable over
Nichols, Toss, and Cox; and of claim 19 as unpatentable over Nichols, Toss,
and Baran.
Therefore, we modify our decision to that extent, and as such, the
Examiner's decision to reject claims 1-7, 9-16, 19, 20, and 22-24 is
REVERSED.
GRANTED; REVERSED
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