Ex Parte Schramm

Patent Trial and Appeal Board

Oct 26, 2017

13726460 (P.T.A.B. Oct. 26, 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.
13/726,460 12/24/2012 Michael R. Schramm MRS-036U-1 1065
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
BROWN, DREW J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
mikeschramm @ besstek. net
mschramm @juneaubiosciences.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SCHRAMM
Appeal 2016-003287
Application 13/726,460
Technology Center 3600
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-003287
Application 13/726,460
STATEMENT OF THE CASE
Appellant requests rehearing under 37 C.F.R. § 41.52(a)(1) for
reconsideration of our decision, mailed August 1, 2017. The decision
affirmed the Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph and reversed the Examiner’s written description and prior
art rejections in view of the deficiencies in the claim language under Section
112, second paragraph. This application is related to Serial Number
13/726,466; Appeal Number 2016-006853, and US Patent 8,336,663 (US
Serial Number 12/623,602). We further note that the Appellant is a pro se
inventor/patent agent prosecuting his own applications.
We have reconsidered our Decision in light of Appellant’s arguments
in the Request for Rehearing, and we are not persuaded that we
misapprehended or overlooked any points identified by Appellant in
rendering our Decision. We decline to change the merits of our prior
Decision for the reasons discussed below.
The claims are directed to a resettable load-limiting adaptive seatbelt
apparatus. Claims 1,10, and 20 reproduced below, are illustrative of the
claimed subject matter:
1. A seatbelt apparatus having a limited non-disengagement
crash-load-limiting payout slip (limited slip) belt engagement
device, wherein the threshold of resistance to slip of said
apparatus varies in the absence of belt movement.
10. A seatbelt apparatus adapted such that in a first scenario
said apparatus allows limited non-disengagement crash-load-
limiting payout release (limited release) of a seatbelt in response
to a seatbelt tension disengagement load, and wherein in a second
scenario said apparatus allows complete release (complete
disconnection) of a seatbelt in response to a hands-free seatbelt
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Application 13/726,460
tension disengagement load, wherein the threshold of resistance
to release of said seatbelt varies.
20. A seatbelt apparatus that disengages in response to a
hands-free seatbelt tension disengagement load.
ANALYSIS
We grant Appellant’s Request for Rehearing (“Req. Reh’g.”) to the
extent we modify our decision as noted below, but these changes do not
change the status of any of the appealed claims, and we decline to make any
substantive change to our Decision.
37 CFR § 41.52 Rehearing.
(a)(1) Appellant may file a single request for rehearing within
two months of the date of the original decision of the Board. No
request for rehearing from a decision on rehearing will be
permitted, unless the rehearing decision so modified the original
decision as to become, in effect, a new decision, and the Board
states that a second request for rehearing would be permitted.
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
Board. Arguments not raised, and Evidence not previously relied
upon, pursuant to §§41.37,41.41, or 41.47 are not permitted in
the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section. When a request
for rehearing is made, the Board shall render a decision on the
request for rehearing. The decision on the request for rehearing
is deemed to incorporate the earlier opinion reflecting its
decision for appeal, except for those portions specifically
withdrawn on rehearing, and is final for the purpose of judicial
review, except when noted otherwise in the decision on
rehearing.
(2) Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
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Application 13/726,460
(3) New arguments responding to a new ground of rejection
designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board’s decision contains an
undesignated new ground of rejection are permitted.
35 U.S.C. § 112, second paragraph.
We note at the outset that a majority of Appellant’s contentions are
arguments which concern the explanation of the claimed invention and
providing additional extrinsic evidence in multiple appendices rather than
identifying points misapprehended or overlooked by the Board in its
decision as required by 37 C.F.R. § 41.52. We additionally note Appellant’s
Request for Rehearing does not provide any citations to the Appeal Brief or
the Reply Brief to identify with particularity points, argued by Appellant on
the record at the time of the appeal, the Board misapprehended or
overlooked. Rather, Appellant provides additional arguments and evidence
which could have been presented in the Briefs.
Furthermore, we note that Appellant’s Appeal Brief and Reply Brief
did not clearly identify these proffered explanations which Appellant now
specifically argues. (Req. Reh’g 2—17). Arguments which Appellant could
have made but did not make in the Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
With respect to independent claims 1,10, and 20, we find Appellant’s
arguments presented in the Appeal Brief and Reply Brief to be attorney
argument critical of the Examiner’s rejection, but without substantively
responding to the rejection. (App. Br. 7—9; Reply Br. 6—13). As a result,
Appellant has not identified with particularity any points the Board
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Application 13/726,460
misapprehended or overlooked in the decision on the record at the time of
the decision. Consequently, Appellant has not stated “with particularity the
points believed to have been misapprehended or overlooked by the Board.
Arguments not raised, and Evidence not previously relied upon, pursuant to
§§ 41.37,41.41, or 41.47 are not permitted in the request for rehearing except
as permitted by paragraphs (a)(2) through (a)(4) of this section.” 37 CFR
§41.52.
For completeness, we address Appellant’s arguments/points
misapprehended or overlooked by the Board in the order they are presented
in the Request.
Appellant’s Request for Rehearing presents many citations to
Appellant’s Specification, and additional arguments and evidence which are
beyond the scope of the Appeal Brief and Reply Brief. See 37 CFR
§ 41.52(a). Furthermore, we find no citation to recent relevant decisions, no
response to a new ground of rejection, and no persuasive indication that the
Board’s decision contains an undesignated NEW GROUNDS OF
REJECTION. Therefore, a majority of Appellant’s Request for rehearing is
unpersuasive since it does not state with particularity the points believed to
have been misapprehended or overlooked by the Board. It is not appropriate
in the Request for Rehearing to present additional arguments and evidence
which have not been considered by the Examiner in an attempt to show that
the Board misapprehended or overlooked something which was not timely
presented to the Examiner or the Board.
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Application 13/726,460
In our Decision, we found that the Examiner made specific findings
and explained these deficiencies. (Dec. 4—9). We find Appellant did not
substantively and persuasively respond to the Examiner’s rejections. Thus,
we are not persuaded that we misapprehended or overlooked the points
argued by Appellant in the Briefs in rendering our Decision, and Appellant
thus has not persuaded us of error in our Decision based on the
administrative record.
From our review of Appellant’s arguments (Req. Reh’g 2—6),
Appellant disagrees regarding an express definition of the claim term
“seatbelt apparatus,” and Appellant provides numerous new arguments
thereto, but Appellant still does not identity in the originally filed
Specification an express definition of the term “seatbelt apparatus” which
would define the metes and bounds of the corresponding structure of the
claimed invention so that a proper analysis of the claims under the remainder
of the statutes may be performed during examination.
With regards to the negative limitation, Appellant provides numerous
new explanations and analogies on how the “threshold of resistance to slip
of said apparatus varies in the absence of belt movement ”. (Req. Reh ’g 6—
12). Appellant did not present these arguments previously. Specifically,
Appellant contends “[ojwing to the fact that both the examiner and this
honorable Board have failed to grasp the concept of varying the threshold of
resistance of slip” Appellant presents further explanation and analogies.
(Req. Reh’g 8). We note that Appellant’s argument to “varying the
threshold of resistance of slip” is not the express language of independent
apparatus claim 1, but is a directed to a method of varying the threshold.
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Application 13/726,460
We find that Appellant’s proffered explanation pertains to how the
threshold is varied or is variable, but does not identify how it “varies” in the
apparatus at any instant of time in the apparatus. (See generally Decision 6—
8). Consequently Appellant’s argument does not identify points
misapprehended or overlooked by the Board.
With respect to independent claims 10 and 20, Appellant contends
that the Board’s statements are self-contradictory. (Req. Reh’g 13—14).
Appellant contends that the Board stated:
"With respect to independent claims 10 and 20, the Examiner
maintains the claims recite functional language while failing to
positively recite the structure which goes to make up the device ",
"Appellant failed to demonstrate and identify; the corresponding
structure which performs the functions" and "Appellant's
response similarly does not identify; corresponding structure
beyond the preamble's "seatbelt apparatus (see Decision pgs.
9 & 10).
(Req. Reh’g 13).
Again, Appellant does not identify any point misapprehended or
overlooked by the Board. We clarify that the statement regarding the
corresponding structure which performs the functions refers to identifying
the corresponding structure in the Specification that performs claimed
functions where the term “seatbelt apparatus” has not been specifically
defined as any specific set of structures so as to determine the metes and
bounds of the claimed invention. As the Examiner identified in the
Examiner’s Answer, numerous elements may form the claimed “seatbelt
apparatus.” (Ans. 5—6). Therefore, Appellant has not particularly pointed
out and distinctly claimed the invention as required by35U.S.C. § 112,
second paragraph. (Final Act. 4; Ans. 6). Consequently, Appellant’s
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Application 13/726,460
argument does not identify points misapprehended or overlooked by the
Board.
With respect to Appellant’s argument regarding the Board’s statement
regarding various embodiments (Dec. 9-10), Appellant contends that the
statement is in error in that it does not provide a proper basis for affirming
the Examiner. Appellant provides no support for their contention and
further admits that various embodiments are claimed as “a notoriously old
and time honored staple of patent prosecution.” (Req. Reh’g 15).
Consequently, Appellant admits that different embodiments are claimed
using the same broad “seatbelt apparatus” which will vary in structure from
claim to claim and Appellant did not specifically identify any corresponding
description in the Summary of the Claimed Subject Matter in the Appeal
Brief to allow the Board to perform its review. (See App. Br. 2).
Consequently, Appellant’s argument does not identify points
misapprehended or overlooked by the Board.
35U.S.C. §102
With respect to our procedural affirmance of independent claim 20
based upon a lack of argument in the principal brief for this claim, Appellant
contends:
Appellant respectfully acknowledges the procedure upon which
the Board stands. Nevertheless, appellant respectfully urges that
it is within this honorable Boards authority to act sua sponte
where the Board recognizes that claims have been erroneously
rejected as is the case here. For that reason and in the interest of
justice, appellant respectfully requests that the Board so act.
(Req. Reh’g 16). We disagree with Appellant’s contention because we did
not find the claim to be “erroneously rejected.” As a result, Appellant has
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Application 13/726,460
not identified any showing of good cause for such relief, and we decline to
modify our decision.
With respect to Appellant’s argument regarding footnote 4 on page 13
of the decision regarding the breath of independent claim 20. We agree with
Appellant that the Specification at paragraph 28 defines “disengagement
load” in a conditional manner regarding “z/the he seatbelt apparatus is in a
disengageable mode” (emphasis added) which is not recited in the language
of independent claim 20. Although the definition appears to be conditional
based upon mode, we withdraw our commentary and delete footnote 4 from
the decision, but do not modify the affirmance of claim 20.
CONCLUSION
We have considered the arguments raised by Appellant in the Request
for Rehearing, but Appellant has not persuaded us that we misapprehended
or overlooked any points in rendering our Decision.
DECISION
We have granted Appellant’s Request for Rehearing to the extent that
we have reconsidered our Decision, but we deny the Request with respect to
making any substantive changes thereto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REQUEST FOR REHEARING-DEN1ED
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