Ex Parte Schulze et alDownload PDFPatent Trial and Appeal BoardMay 11, 201712665774 (P.T.A.B. May. 11, 2017) 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. 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 Copy with citationCopy as parenthetical citation