Ex Parte Shkolnik

Board of Patent Appeals and Interferences

May 26, 2010

09914487 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHLOMO SHKOLNIK
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Appeal 2009-005409
Application 09/914,487
Technology Center 2100
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Decided: May 26, 2010
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-005409
Application 09/914,487

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I. STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on March 15, 2010, for reconsideration
of our Decision mailed January 13, 2010 (hereinafter “Decision”) with
respect to claims 72 and 92 (Request 1).
The Decision affirmed the Examiner’s rejections of claims 23-26, 30,
31, 41, 42, 51, 72-76, and 80-92 under 35 U.S.C. § 103(a) as being
unpatentable over Thackston in view of Carver (Decision 16). Our
affirmance of the rejection of claims 23-26, 30, 31, 41, 42, 51, 73-76, and
80-91 is not the subject of this Request (Request 1-3).
We have reconsidered our Decision of January 13, 2010 regarding
claims 72 and 92, in light of Appellant’s comments in the Request, and we
find Appellant has not identified any points misapprehended or overlooked
by the Board in our Decision therein. We decline to change our Decision for
the reasons discussed infra.

II. ISSUE
The issue we address on this Request is whether Appellant has
identified any points misapprehended or overlooked by the Board in our
holding claims 72 and 92 unpatentable over Thackston in view of Carver.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Brief
1. As to claim 72, Appellant contends that “the entire concept of
Thackston is that information on all parts should be stored” (App. Br.
16), and thus, “[w]hile applicant agrees with the Examiner that not all
information is accessible by all designers, it is a primary principle in
Thackston that all information be stored in the system, since all of the
information is used by at least some designers, so all the information
must be present in the database” (id.).
2. As to claim 92, Appellant contends that “the claims further requires
that the system includes a second database that associates each of the
worker codes with one or more workers responsible for design, such
that changing worker assignments does not require changes in the part
numbers” (App. Br. 19) and contends that “[n]o such second database
is taught or suggested by Thackston” (id.).

IV. PRINCIPLES OF LAW
“[I]t is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[]. Reply briefs are to be used to
reply to matter[s] raised in the brief of the appellee.” Kaufman Company v.
Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986). “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
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Application 09/914,487

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an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered.” McBride v. Merrell Dow and Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted). “The
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision).

V. ANALYSIS
In the Request, Appellant contends that, in our Decision, “there were a
number of errors, misapprehensions or overlooking of arguments made in
the brief” (Request 1). In particular, Appellant contends that “regarding
claim 72, the Board overlooked an important set of limitations that were
argued in the reply brief starting at page 13 fourth full paragraph to page 14,
third full paragraph” (Request 2; emphasis added). Appellant similarly
contends that, regarding claim 92, “Thackston is completely silent in regard
to any identification of workers responsibilities for design” wherein “[t]his
argument was made in the first three full paragraphs on page 17 of the reply
brief” (Request 2; emphasis added).
Regarding claim 72, although Appellant contends that “the Board
overlooked an important set of limitations that were argued in the reply
brief” (Request 2), such contention was not raised in the Appeal Brief (FF
1). It is inappropriate for Appellant to discuss for the first time in the Reply
Brief matters that could have been raised in the Appeal Brief. See Kaufman
Company, 807 F.2d at 973 and McBride, 800 F.2d at 1211.
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As set forth in our Decision, we address Appellant’s contention set
forth in Appellant’s Appeal [Principal] Brief and, in agreeing with the
Examiner, hold that “[o]ne of ordinary skill in the art would have found it
obvious that a particular stored part design model may comprise less than
10% of all elements” as required by claim 72 (Decision 12-13). As set forth
in the Decision, contrary to Appellant’s contention set forth in Appellant’s
Appeal Brief, “claim 72 does not preclude storing of all elements but rather
merely requires that fewer than 10% is selected” (Decision 12).
Similarly, regarding claim 92, although Appellant contends that
arguments were made in Appellant’s Reply Brief (Request 2), such
contention also was not raised in the Appeal Brief (FF 2). As set forth in our
Decision, we addressed Appellant’s contentions as set forth in the Appeal
Brief and agreed with the Examiner that “associating worker codes with one
or more workers responsible for the design”, as required by claim 92, “reads
on Thackston’s ‘stored design and analysis access permission data module
860’” (Decision 13).
Thus, Appellant has not identified any points misapprehended or
overlooked by the Board in our Decision holding that the Examiner did not
err in rejecting claims 72 and 92 over the applied prior art.
Accordingly, Appellant’s Request does not persuade us of any points
we misapprehended or overlooked in our Decision and to reverse the
Examiner’s rejection of claims 72 and 92. Therefore, we find Appellant’s
arguments unavailing.

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VI. CONCLUSION
We have carefully considered the arguments raised by Appellant in
the Request for Rehearing, but find no points misapprehended or overlooked
by the Board in our Decision and none of these arguments are persuasive
that our original Decision was in error. We are still of the view that the
invention set forth in claims 72 and 92 is unpatentable over the applied prior
art based on the record before us in the original appeal. This Decision on
Appellant’s Request for Rehearing is deemed to incorporate our earlier
Decision (mailed January 13, 2010) by reference. See 37 C.F.R.
§ 41.52(a)(1).

VII. DECISION
We have granted Appellant’s request to the extent that we have
reconsidered our Decision of January 13, 2010, but we deny the request with
respect to making any changes therein.

REHEARING DENIED

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