Ex Parte Roit et alDownload PDFPatent Trial and Appeal BoardJul 28, 201612629337 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/629,337 12/02/2009 15624 7590 08/01/2016 Ryan Alley Intellectual Property Law P.O. Box 3698 Arlington, VA 22203 FIRST NAMED INVENTOR Willard J. Roit 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. 5.0010.1 (24ES235260) 7651 EXAMINER O'CONNOR, MARSHALL P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): office@alleylegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLARD J. ROIT and MARTIN F. BADEWITZ, JR. Appeal2013-002291 Application 12/629,337 Technology Center 3600 Before LINDA E. HORNER, LYNNE H. BROWNE, and PAUL J. KORNICZKY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Willard J. Roit and Martin F. Badewitz, Jr. (Appellants) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request), dated July 18, 2016, of our decision mailed June 10, 2016 (hereinafter "Decision"). In the Decision, we affirmed the Examiner's rejections of claims 1, 3-6, and 10 under 35 U.S.C. § 102(b) and of claims 11, 13-15, and 18-22 under 35 U.S.C. § 103(a). We reversed the rejection of claims 1, 3-6, 10, 11, 13-15, and 18-22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appellants seek rehearing as to the portion of the Decision affirming the rejections under Appeal2013-002291 Application 12/629,337 35 U.S.C. §§ 102(b) and 103(a). We vacate the portion of the original Decision addressing the rejections under 35 U.S.C. §§ 102(b) and 103(a) and substitute the following decision in its place. As a result of this rehearing, we reverse the Examiner's rejections of claims 1, 3-6, and 10 under 35 U.S.C. § 102(b) and of claims 11, 13-15, and 18-22 under 35 U.S.C. § 103(a). DISCUSSION Appellants assert that we have overlooked their argument made in the Reply Brief that Nagashima's Figure 6 fails to disclose claim l's "body" and "core blocked by the body." Request 3 (citing Reply Br. 7). In the Reply Brief, Appellants argued that spring 75 is used in a completely distinct embodiment that cannot be swapped into the previously-applied embodiments of FIGS. 4 and 5 under anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (elements from different embodiments in a reference cannot be combined to meet a claim under § 102). To the degree that the Examiner alleges that the embodiments are the same, the Examiner errs. The embodiment of FIG. 6 uses a spring with an opposite bias, uses a different and more powerful solenoid, lacks a locking mechanism, requires an apparently moveable spring retainer 74 at an opposite end of the spring, and does not describe any blocking body for the same or any core or accumulator as in the applied embodiments. Reply Br. 7 (citing Nagashima, Fig. 6; col. 6., 1. 33-col. 7, 1. 12) (emphasis added). We understood this argument to be directed to the differences between the embodiments shown in Nagashima's Figures 4 and 5 and the embodiment shown in Figure 6, and not to differences between the embodiment shown in Figure 6 and the claimed invention. Thus, we 2 Appeal2013-002291 Application 12/629,337 addressed this argument by explaining that "Appellants' argument is not responsive to the rejection as articulated by the Examiner. The rejection no longer relies on the embodiments shown in Figures 4 and 5 and does not propose to combine elements from the embodiments of Figures 4 and 6 to meet the claim." Decision 8. Accordingly, we did not overlook Appellants' argument. However, to the extent that Appellants were arguing in the Reply Brief that the embodiment ofNagashima's Figure 6 as used in the system of Figure 1 does not disclose the claimed "body" and "core blocked by the body," we misconstrued Appellants' argument. We grant rehearing to reconsider Appellants' argument, as clarified in the Request for Rehearing. First, we note that although it is not labeled in Figure 6, Nagashima's cylinder 17, which the Examiner identifies as corresponding to the claimed body, is shown in partial cross-section in Figure 6. See Nagashima, Fig. 6. We further note that Nagashima's plunger rod 72 appears to have a wider portion -again not labeled- which could fairly be construed as a core. However, Appellants are correct that the Examiner never explicitly identified the core or explained how it was blocked by the body. See Request 3. It is not readily apparent from the disclosure in Nagashima that the assumed core (i.e., the enlarged portion of plunger rod 72) would be blocked by the body. Thus, any finding that Nagashima's embodiment shown in Figure 6 includes "a core blocked by the body" as required by claims 1 and 11, would be speculative. Appeal Br. 20, 23. For this reason, we do not sustain the Examiner's decision rejecting claims 1, 3-6, and 10 as anticipated by N agashima. For the same reason, we do not sustain the Examiner's decision rejecting claims 11, 13-15, and 18- 3 Appeal2013-002291 Application 12/629,337 22 as unpatentable over Nagashima in view of Applicant's Admitted Prior Art. DECISION We grant Appellants' Request for Rehearing. Accordingly, we modify our original Decision in light of the Request and REVERSE the Examiner's rejection of claims 1, 3-6, and 10 under 35 U.S.C. § 102(b) and REVERSE the Examiner's rejection of claims 11, 13-15, and 18-22 under 35 U.S.C. § 103(a). GRANTED; REVERSED 4 Copy with citationCopy as parenthetical citation