Ex Parte Schulze et al

Patent Trial and Appeal Board

May 11, 2017

12665774 (P.T.A.B. May. 11, 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.
12/665,774 05/28/2010 Ingo Schulze PTB-6032-61 3707
23117 7590 05/15/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGO SCHULZE
and HARALD MOSCHUTZ
Appeal 2016-001029
Application 12/665,774
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants1 filed a Request for Rehearing under 37 C.F.R. § 41.52
(“Request”) of our decision mailed March 2, 2017 in connection with the
above-captioned appeal (“Decision”). Requests for Rehearing are limited to
matters overlooked or misapprehended by the Panel in rendering the original
decision. See 37 C.F.R. § 41.52.
1 Appellants identify the real party in interest as BSH Hausgerate GmbH
(Appeal Br. 3).
Appeal 2016-001029
Application 12/665,774
In the Decision, we
(1) affirmed the Examiner’s 35 U.S.C. § 103(a) rejection of claims
19, 20, 25, 26, 28, 30, 31, 36, 37, 39-41, 45^17, and 51-54 as
unpatentable over Minayoshi;2
(2) reversed the § 103(a) rejection of claims 29, 38, and 55 as
unpatentable over Minayoshi;
(3) affirmed the § 103(a) rejection of claims 19, 20, 25, 26, 28, 30,
31, 36, 37, 39-41, 45^47, and 51—54 as unpatentable over
Minayoshi in view of Wilsberg;3
(4) reversed the § 103(a) rejection of claims 29, 38, and 55 as
unpatentable over Minayoshi in view of Wilsberg;
(5) affirmed the § 103(a) rejection of claims 25, 26, 36, 41, 47, and
52—54 as unpatentable over Minayoshi in view of Wilsberg, and
further in view of No;4
(6) reversed the § 103(a) rejection of claim 55 as unpatentable over
Minayoshi in view of Wilsberg, and further in view of No;
(7) affirmed the § 103(a) rejection of claims 25, 26, 36, 41, 47, and
52—54 as unpatentable over Minayoshi in view of No;
(8) reversed the § 103(a) rejection of claim 55 as unpatentable over
Minayoshi in view of No;
2 Minayoshi et al., US Patent Pub. No. 2004/0040344 Al, published March
4, 2004.
3 Wilsberg, US Patent No. 4,714,479, issued December 22, 1987.
4 No et al., US Patent Pub. No. 2003/0074932 Al, published April 24, 2003.
2
Appeal 2016-001029
Application 12/665,774
(9) affirmed the § 103(a) rejection of claims 19-22, 24—33, and 35—
54 as unpatentable over Minayoshi in view of Giichi;5
(10) reversed the § 103(a) rejection of claim 55 as unpatentable over
Minayoshi in view of Giichi; and
(11) affirmed the § 103(a) rejection of claims 23 and 24 as
unpatentable over Minayoshi in view of Giichi, and further in view
of Hoppe.6
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
ISSUE RAISED IN REQUEST
Appellants contend that the Decision “reversed ‘the rejection of
[dependent] claim 55 under 35 U.S.C. § 103(a) over Minayoshi and further
in view of Giichi,’” but “the Decision may have inadvertently omitted
[independent] claims 29 and 38 from the reversal of this rejection” (Request
1). Appellants state that the Decision determined that “Minayoshi does not
disclose, and would not have rendered obvious,” the limitation “a lowest end
of the drum,” as recited in claims 29, 38, and 55 {id., citing Decision 9).
Appellants further argue that there is no dispute that the Examiner does not
rely on Giichi for disclosing or suggesting the limitation “a lowest end of the
drum” (Request 2). According to Appellants, Giichi, therefore, does not
overcome Minayoshi’s deficiency with respect to claims 29 and 38 {id.).
Thus, Appellants conclude that the Decision should have also reversed the
5 Giichi et al., JP 2000-051562, published February 22, 2000. Giichi is in
Japanese. Because Giichi is in Japanese, we will refer to the machine
translation of its Abstract, as do both Appellants and the Examiner.
6 Hoppe, US Patent Pub. No. 2008/0155760 Al, published July 3, 2008.
3
Appeal 2016-001029
Application 12/665,774
rejection of claims 29 and 38 under 35 U.S.C. § 103(a) over Minayoshi in
view of Giichi (id.).
We have reconsidered our Decision of March 2, 2017. We have
reviewed the arguments set forth by Appellants in the Request, and are
persuaded by them. In particular, the rejection of claims 29 and 38 over
Minayoshi in view of Giichi is reversed for the same reasons that the rejection
of those claims over Minayoshi was reversed. In view of the foregoing, we
reverse the rejection of claims 29 and 38 under 35 U.S.C. § 103(a) over
Minayoshi and further in view of Giichi.
In light of Appellants’ Request, we GRANT Appellants’ Request for
Rehearing for the reasons set forth above.
CONCLUSION
We modify our Decision at page 14 to reverse the Examiner’s
rejection of claims 29 and 38 under 35 U.S.C. § 103(a) over Minayoshi and
further in view of Giichi.
We have granted Appellants’ request to the extent that we have
modified our decision of March 2, 2017 as set forth above, however, in all
other respects the decision remains unchanged.
REHEARING GRANTED
4