Ex Parte Stepka

Board of Patent Appeals and Interferences

Aug 17, 2009

10898014 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN STEPKA
____________

Appeal 2009-002439
Application 10/898,014
Technology Center 1700
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Decided: August 17, 2009
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Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-002439
Application 10/898,014

This is in response to a Request for Rehearing (“Request”), dated
June 09, 2009, of our Decision, mailed March 31, 2009 (“Decision”),
wherein we affirmed the Examiner’s § 103 rejection of appealed claims 1,
4-7, 11, 17, 18, and 21-23.
We have thoroughly reviewed the arguments set forth by Appellant
in the Request. However, we remain of the opinion that the Examiner
properly rejected the appealed claims under 35 U.S.C. § 103(a).
We do not find Appellant’s contentions persuasive of error in our
Decision. Appellant contends that independent claims 1 and 11 recite a
“shaped edge surface portion” of the hockey stick edge surface that is
“sized and shaped for receiving and supporting only a portion of the
hockey puck to the hockey stick shaped base.” (Request 5 (emphasis
omitted); see also claims 1 and 11). For the first time on appeal, Appellant
argues that the prior art of record cannot be combined “in a way to come
up with the claimed provision of a supporting edge surface that is shaped
and sized to support only a portion of the supported item.” (Request 6.)
Arguments not raised in the briefs before the Board are not
permitted in a request for rehearing. See 37 C.F.R. § 41.52(a)(1) (2008).1
Therefore, we will not consider Appellant’s untimely argument on
rehearing.
Appellant also contends that “[a] hockey stick shape is more than a
rectangle, and one of ordinary skill in the art would completely understand
this and would readily distinguish a hockey stick shape from a rectangle

1 Paragraphs (a)(2) and (a)(3) of 37 C.F.R. § 41.52 are not applicable in this
case.
2
Appeal 2009-002439
Application 10/898,014

without the need for further specificity.” (Request 7-8). Appellant is
arguing the claimed invention is patentable based upon the hockey stick
shape (as compared to a rectangle) and not the support mechanism for the
hockey puck to be displayed. Appellant’s arguments regarding the overall
hockey stick shape relate only to ornamentation. As set forth in our
decision, pages 6-7, matters relating to ornamentation only which have no
mechanical function cannot be relied upon to patentably distinguish from
the prior art. In Seid 161 F.2d 229, 231 (CCPA 1947).
In conclusion, based on the foregoing, Appellant’s Request is
granted to the extent that we have reconsidered our Decision, but is denied
with respect to making any change therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

DENIED

tc

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