Ex Parte Rottenberg et al

Patent Trial and Appeal Board

Nov 13, 2017

13390140 (P.T.A.B. Nov. 13, 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.
13/390,140 02/13/2012 Dan Rottenberg 487145.118 4452
122473 7590 11/15/2017
Faegre Baker Daniels LLP (487145)
Patent Docketing - Intellectual Property
2200 Wells Fargo Center, 90 South Seventh Street
EXAMINER
ALEMAN, SARAH WEBB
Minneapolis, MN 55402-3901 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
patentdocketing@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN ROTTENBERG and RON SACHER
Appeal 2015-008117
Application 13/390,140
Technology Center 3700
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants have filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”), dated October 6, 2017. The Request seeks
reconsideration of a decision (hereinafter “Decision”), mailed August 7,
2017, affirming the Examiner’s rejection of claim 1 and 5—11 under
35 U.S.C. § 103(a) as unpatentable over Fahey et al. (US 2006/0100687 Al,
pub. May 11, 2006). We have jurisdiction over the Request under 35 U.S.C.
§ 6(b).
In the Request (page 5), the Appellants re-emphasize their argument
from the Appeal Brief (page 8), that the Examiner does not provide support
for the assertion that it would have been obvious to one of ordinary skill in
the art to have Fahey’s phase shift to be 45 degrees, as recited in
Appeal 2015-008117
Application 13/390,140
independent claim 1, because “discovering the optimum or workable ranges
involves only routine skill in the art” (Final Action, page 3). Upon
reconsideration, we agree with the Appellants that “although Fahey discloses
staggering of the struts ensures adequate flexibility,” the Examiner has not
sufficiently explained why one of ordinary skill in the art would recognize
that “phase shifting a pair of cuts and pair of uncut portions at one axial
station in comparison to such pairs at another axial station” at a particular
angle (e.g., at an angle of 45°) would ensure this result. Request 5.
Thus, we grant the Request and reverse the Examiner’s rejection of
independent claim 1 and dependent claims 5—11 under 35 U.S.C. § 103(a) as
unpatentable over Fahey.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1 and 5—11.
GRANTED
2