Ex Parte Santos

Patent Trials and Appeals Board

Oct 23, 2014

12284439 - (R) (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ARSENIO P. SANTOS, JR.
________________

Appeal 2012-005718
Application 12/284,439
Technology Center 3700
________________

Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing (“Req. Reh’g.”) dated
Sept. 26, 2014, under 37 C.F.R. § 41.52, of the Decision on Appeal, mailed
July 28, 2014 (“Decision”), regarding the rejection of claim 5.
We do not modify our opinion.

THE REQUEST FOR REHEARING
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Patent Trial and Appeal Board (“Board”) and
evidence not previously relied upon in the briefs are not permitted in the
Appeal 2012-005718
Application 12/284,439

2
request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for
rehearing is not an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. The proper course for an Appellant dissatisfied with a Board
decision is to seek judicial review, not to file a request for rehearing to
reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
Here, Appellant seeks a rehearing alleging the Board misinterpreted In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) and also Appellant’s position.
See Req. Reh’g. 1, 2. More precisely, Appellant contends that the Board
misapprehended the following two points:
1. The Board misinterpreted In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994), in arriving at the conclusion that a
reference disclosing a first device having a particular function
could be used to improve a second device, by adding that
function to the second device, even if the resulting device
would be inferior to the first device in performing the function
of the first device.

2. The Board misinterpreted [A]ppellant’s position
that because the terminal end 34 [of Croisant] is blocked by
mirror image terminal end 36 from being pushed out of the clip
plane, it would not be obvious to use that element in the device
of Randall, for an entirely different purpose. It is not that the
person having ordinary skill in the art (PHOSITA) would be
obligated to transfer the blocking mirror image end 36 to the
Randall device, but rather that the impossibility of using that
element as a pushing member in the [Croisant] device, would
prevent a PHOSITA from conceiving of that potential purpose,
and thereby being inspired to add that element into the Randall
device.
Req. Reh’g. 1, 2.
Appeal 2012-005718
Application 12/284,439

3
BACKGROUND AND ANALYSIS
Claim 5, the only claim on appeal, is directed to “[a] method of
clipping papers together.” See Decision 2. The Examiner rejected claim 5
under 35 U.S.C. § 103(a) as being unpatentable over Randall and Croisant.
Decision 3; Ans. 4. The Examiner identified the respective structures of
Randall and Croisant and provided two distinct reasons1 to combine such
structures. Decision 3; Ans. 4, 5.
With respect to the first, “pointer” reason, Appellant contends that any
such combination “is far inferior” and that “it would not make any sense to
make a combination that only leads to a device markedly inferior to existing
devices.” App. Br. 4; see also Decision 5. The Board noted that Appellant
failed to provide any evidence in support of this allegation and further, the
Board referenced Gurley to the effect that “just because better alternatives
exist in the prior art does not mean that an inferior combination is inapt for
obviousness purposes.” Decision 5. It is this reliance on, or understanding
of, Gurley that Appellant believes to be misapprehended. Req. Reh’g. 1, 2.
Appellant contends that the holding in Gurley “is not that some new
function was disclosed [i.e., Croisant’s pointer] . . . and then conceptually
transferred to another piece of prior art [Randall] to allegedly arrive at [the
claimed] device” and as such, “the point of the Gurley decision misses the
legal point of the present appeal.” Req. Reh’g. 2. We disagree that the
Decision cited Gurley for disclosing that a known function could be

1 The first reason is “to provide a clip [Randall] that could also be used as a
pointer [Croisant].” Ans. 5. The second reason is to provide Randall’s user
“with a more specific location for the application of the disclosed ‘thumb
pressure’ of Randall.” Ans. 5. The first reason is addressed in Appellant’s
first purportedly misapprehended point and the second reason is addressed in
Appellant’s second purportedly misapprehended point.
Appeal 2012-005718
Application 12/284,439

4
combined with another reference; instead, the Decision referenced Gurley as
an indication that even if a combination (here, Randall and Croisant) might,
in some respect, be an inferior combination, that combination may still be
applicable for a determination of obviousness.2 See Decision 5.
Regarding the combination of references relied upon by the Examiner
in the obviousness rejection, Appellant provides no authority for the
contention that “[i]f the term ‘improvement’ is not restricted to an
improvement in the ability to carry out the existing function of a prior art
device, this opens the door wide to combinations of prior art elements that
are dubious in the sense of actually being an improvement.”3 Req. Reh’g. 2.
It seems that Appellant is seeking to limit an “improvement” to only that
which increases the ability to carry out an existing function and to not
encompass any combination of that device with another device having
another function unless the existing function is improved by the
combination. This limitation on “improvement” in the context of an
obviousness rejection is not persuasive. To the extent that Appellant

2 See also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (“[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).

3 For examples of “combinations of prior art elements that are purportedly
dubious in the sense of actually being an improvement,” Appellant identifies
“adding a can opener to the side of a computer” and also “[a]n
intercontinental ballistic missile can be added to a paper clip.” Req. Reh’g.
2.
Appeal 2012-005718
Application 12/284,439

5
proposes that the term “improvement” must be “restricted to an
improvement in the ability to carry out the existing function of a prior art
device” (Req. Reh’g. 2) when an examiner relies on a combination of
teachings for an obviousness analysis, Appellant does not provide any
authority for such proposition, and we are unaware of any.
Appellant also contends that “[i]f the resulting device is not better at
any particular function than what was available before, then it is not an
improvement in any real or practical sense of that word.” Req. Reh’g. 2.
Here, Appellant is contending that to be an improvement, the device must be
“better . . . than what was available before.” However, Appellant does not
explain how a single device that performs two functions as a result of a
combination cannot be, in some respects, actually preferable (i.e., “better”)
over two separate devices that only perform a single function (even
presuming that the combined device functions less efficiently than the
individual devices). In short, Appellant does not identify any authority for
the proposition that a resulting device must be “better at any particular
function than what was available before” in order to be an “improvement.”
See supra.
Presently, the matter alleged to be misapprehended is the Board’s
reliance on Gurley (and similarly Medichem and Winner Int’l, as discussed
supra) and its application in the Decision to the effect that a combination of
references (even if inferior) can be employed to render a claim obvious.
Req. Reh’g. 1, 2; Decision 5. In view of Appellant’s arguments, we are not
persuaded that the earlier Decision misapprehended or misinterpreted
Gurley.
Appeal 2012-005718
Application 12/284,439

6
With respect to Appellant’s second point (i.e., that the Board
misinterpreted Appellant’s position), Appellant contends that a dangerous
precedent may occur if the Board’s analysis is allowed to stand. Req. Reh’g.
3. In short, Appellant contends that the idea of one skilled in the art who
may repurpose a known element “to a purpose that is not even possible in
the first device ‒ opens the door far too wide to libertine combinations of
repurposed elements.” Req. Reh’g. 3. Here, Appellant focuses solely on
what may be taught in Croisant (“that is not even possible in the first
device”) when this is not the present standard for a finding of obviousness.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Additionally, the
primary reference to Randall discusses “thumb pressure” that is applied to
the inner loop to force it outwardly “to result in ready application of the clip
to a stack of sheets.” Randall 2:48‒52; see also Decision 5. Appellant
argues that “the impossibility of using end 34 to push any portion of the
[Croisant] clip out of its plane” would prevent a person skilled in the art
“from conceiving the repurposing of that terminal end to this use in a
separate environment.” Req. Reh’g. 3. Without addressing Appellant’s
unsupported “impossibility” argument, the Examiner’s stated reason to
combine the reference teachings is that if Croisant’s end 34 were combined
with Randall’s clip, “a more specific location for the application of the
disclosed ‘thumb pressure’ of Randall” would result. Ans. 5. Appellant
does not explain how this result (i.e., an improved thumb pressure location
in Randall) would not occur in the combination used by the Examiner, or
how this result would not have been obvious to one skilled in the art.
Decision 6.
Appeal 2012-005718
Application 12/284,439

7
In view of the above, Appellant’s contention that the Board erred or
otherwise misapprehended or overlooked points previously raised is not
persuasive. We are not persuaded to change our Decision.

DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of the arguments in Appellant’s
Request for Rehearing, but is denied with respect to our making any
modification to the Decision.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

mls