Ex Parte Ruden et alDownload PDFPatent Trials and Appeals BoardSep 18, 201411865358 - (R) (P.T.A.B. Sep. 18, 2014) Copy Citation 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. 11/865,358 10/01/2007 Shawn Allen Ruden STL13230 5145 73462 7590 12/19/2014 Hall Estill Attorneys at Law (Seagate Technology LLC) 100 North Broadway, Suite 2900 Oklahoma City, OK 73102-8820 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 12/19/2014 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 SHAWN ALLEN RUDEN and SABRINA LYNNE MURRAY ____________ Appeal 2012-005823 Application 11/865,358 Technology Center 3700 ____________ Before STEFAN STAICOVICI, CHARLES N. GREENHUT and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Shawn Allen Ruden and Sabrina Lynne Murray (Appellants) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated November 18, 2014, of our decision (hereinafter “Decision”) mailed September 18, 2014. In the Decision, we affirmed the Examiner’s rejection of claims 10, 11 and 14–17 under 35 U.S.C. § 103(a) over Whalen and Christensen based on new rationale for affirmance that we identified as NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Decision 7. Appeal 2012-005823 Application 11/865,358 2 Appellants point out that the new rationale for affirmance was based on our having found that the second embodiment of Whalen illustrates “an alternative attachment where top cover 180 includes flap 182 that includes a projection (unnumbered) for engagement with an opening (unnumbered) in bottom cover 160. See Whalen, col. 5, 1. 23−col. 6, 1. 39.” Decision 5. In the Request, Appellants argue that, “[t]he skilled artisan having read Whalen ascertains that the Board’s stated view is a factual misapprehension of what Whalen actually teaches. There is no opening (alleged aperture) in the bottom of cover 160 for connecting with the top cover.” Request 2. We agree with Appellants that Whalen fails to explicitly disclose an opening in the bottom cover 160 as embodied in the figures illustrating the second embodiment of Whalen. Therefore, in view of Appellants’ contention, we grant the request and vacate our decision to enter a new ground of rejection under 35 U.S.C. § 103(a) over Whalen and Christensen with respect to claims 10, 11 and 14– 17 pursuant to 37 C.F.R. § 41.50(b). Accordingly, we modify our decision to that extent, and as such, the Examiner’s decision to reject claims 10, 11 and 14–17 is also REVERSED. GRANTED mls Copy with citationCopy as parenthetical citation