12139377 - (R) (P.T.A.B. Sep. 17, 2013)

Ex Parte Shockey et al

Patent Trials and Appeals BoardSep 17, 2013

12139377 - (R) (P.T.A.B. Sep. 17, 2013)

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. 12/139,377 06/13/2008 Brian Shockey 19958.001US01 1307 67559 7590 02/21/2014 Parsons Behle & Latimer Attn: Docketing 800 W. Main Street, Suite 1300 Boise, ID 83702 EXAMINER PAINTER, BRANON C ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 02/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte BRIAN SHOCKEY, DUANE ARMIJO, and CHRISTOPHER SHOCKEY ________________ Appeal 2011-009709 Application 12/139,377 Technology Center 3600 ________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-009709 Application 12/139,377 2 STATEMENT OF THE CASE1 Appellants filed a Request for Rehearing (“Req.”) of the Decision (“Dec.”) affirming the rejection of claims 1-4, 6, 7, 21-23, and 25-33 under 35 U.S.C. § 103(a) as being unpatentable over Cymbala, and of claims 5 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Cymbala and Dunn. PRINCIPLES OF LAW Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1), and “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Moreover, requests must specifically recite the points of law or fact which Appellants feel were overlooked or misapprehended by the Board. Arguments raised by Appellants for the first time in a Request for Reconsideration are waived if the arguments were required to have been made in the Briefs, unless good cause is shown. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008). DISCUSSION Appellants argue that the Board misapprehended or overlooked a point because it did not indicate what interpretation of the term ‘faux finish’ was used in reaching its conclusion that Cymbala2 discloses a ‘faux finish.’ Req. 3. 1 Our decision will make reference to Appellants’ Request for Rehearing (“Request,” filed Nov. 18, 2013), Appeal Brief (“App. Br.,” filed Jan. 13, 2011) and Reply Brief (“Reply Br.,” filed May 16, 2011), the PTAB Decision (“Decision,” mailed Sep. 17, 2013), and the Examiner’s Answer (“Ans.,” mailed Mar. 15, 2011). 2 U.S. Patent No. 5,896,714 (issued Apr. 27, 1999). Appeal 2011-009709 Application 12/139,377 3 Claims of unexpired patents are construed by applying the broadest reasonable interpretation, in light of the specification. Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The Examiner maintained that the claim language “faux finish” only requires some type of patterning on the outer surface. Ans. 8. On appeal, Appellants argued that “the plain meaning of the term ‘faux finish’ is a finish that is intended to remain visible in a finished structure.” Reply 4. We rejected Appellants’ contention in the Decision, and explained that: it is well established that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (the recitation of a new intended use for an old product without distinguishing structure or functional features does not make a claim to that old product patentable). Dec. 4. Although Appellants’ Specification does not specifically define “faux finish,” its depiction of that feature in Figure 2H as a series of vertical lines on a surface is indistinguishable from the structure depicted in Cymbala Figure 7. Thus, “faux finish” is accorded its ordinary and customary meaning, and no express definition of “faux finish” is necessary to conclude that Appellants failed to overcome the Examiner’s determination Appeal 2011-009709 Application 12/139,377 4 that Cymbala discloses the structure as claimed. Cf. Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”) Consequently, we are unpersuaded that we misapprehended or overlooked any point of fact or law previously argued by Appellants, and therefore we decline to modify our original Decision. DECISION While we have granted Appellants’ request for rehearing to the extent that we have reconsidered our previous decision, the request is denied in all other respects, including making any modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED Klh