Ex Parte StiehlerDownload PDFPatent Trial and Appeal BoardJan 9, 201813202010 (P.T.A.B. Jan. 9, 2018) 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. M078 P02341-US 4977 EXAMINER SEABE, JUSTIN D ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 13/202,010 08/17/2011 3017 7590 01/09/2018 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5THFLOOR PROVIDENCE, RI02903 Frank Stiehler 01/09/2018 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 FRANK STIEHLER Appeal 2016-007953 Application 13/202,010 Technology Center 3700 Before LINDA E. HORNER, BRETT C. MARTIN, and BRENT M. DOUGAL, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-007953 Application 13/202,010 Appellant filed a REQUEST FOR REHEARING on November 27, 2017 (hereinafter “Rehearing Request” or “Reh’g Req.”) under 37 CE.R. § 41.52, seeking rehearing of our Decision, mailed September 28, 2017 (hereinafter “Decision” or “Dec.”), which affirmed various final rejections of the claims made by the Examiner. We grant the Rehearing Request to the extent that we consider the Appellant’s arguments, but DENY the request to modify the Decision. Appellant’s sole argument is that “Crane and Morris are devoid of a teaching or suggestion that a person of ordinary skill in the art would envision extending damping features that contact both the blades and the blade necks.” Reh’g Req. 2. We agree, but this does not affect our Decision. As with the original Appeal, Appellant again appears to attack the references individually rather than addressing the combination. We also note that motivation need not be found in the references themselves, but may simply be gleaned from the knowledge of those of ordinary skill in the art given the prior art teachings. Here, Morris teaches a radially inward damping element and Crane teaches a circumferentially extending damping element that contacts the blade. Neither reference teaches the combination, but that is to be expected in an obviousness rejection. The Examiner’s proposed combination utilizes the individual advantages of the radial and circumferential damping of each reference, but combines them to achieve improved damping by having damping features that contact both the blades and the blade necks. The Examiner provides a reasonable basis with rational underpinnings in support 2 Appeal 2016-007953 Application 13/202,010 of this combination, therefore making the prima facie case for obviousness. See Ans. 3. In order to overcome such a rejection, Appellant would need to show, for example, that one of the references teaches away from the proposed combination or possibly submit secondary evidence of nonobviousness to overcome the prima facie case made by the Examiner. Again, the fact that neither reference teaches the combination is not dispositive in an obviousness rejection. Accordingly, we decline to modify our original Decision. REHEARING DECISION While we have considered the Decision in light of the Request for Rehearing, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.52(a)(1), this Decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.2 and 104.2. DENIED 3 Copy with citationCopy as parenthetical citation