Ex Parte Strong

Board of Patent Appeals and Interferences

Nov 2, 2011

11037541 (B.P.A.I. Nov. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CLINTON R. STRONG
____________________

Appeal 2009-010332
Application 11/037,541
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and JAMES P.
CALVE, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-010332
Application 11/037,541
2
This is a response to a Request for Rehearing in the above-noted
appeal. In our original Decision mailed March 24, 2011, we reversed the
Examiner’s rejections of claims 23-27, 29-41 and 43-48. We entered a new
rejection of claims 23-27, 29-41, and 43-481 under 35 U.S.C. § 103(a) as
unpatentable over Casto (U.S. 3,753,585 issued Aug. 21, 1973) in view of
Schmitt (U.S. 3,707,817 issued Jan. 2, 1973). 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.
As a basis for rehearing, Appellant presents two arguments: first, that
the Panel construed the claim term “integrate” inconsistently with the Board
construction of the term in a prior decision in an appeal in a parent
application, and second, that the Panel’s current construction of the claim
term “integrate” is contrary to the plain meaning of the term.

Appellant’s First Argument
Appellant’s first argument is legally insufficient for the grant of any
relief in response to a request for rehearing. First of all, if Appellant wished
to have a claim term construed in a certain manner, Appellant should have
argued that claim construction in Appellant’s briefing on appeal. In this
instance, if Appellant was desirous of having the term construed in the same
manner as a panel in a different appeal construed the claim term, it is
incumbent on the Appellant to at least inform the Panel of the other related
appeal. This is the purpose of the Related Proceeding Appendix required in
37 C.F.R. § 41.37(c)(1)(x). Failure of Appellant to inform the Panel of a
related proceeding clearly does not give rise to a legal conclusion that the

1 The reference to claim 49 on page 6, line 4 of our previous opinion is a
typographical error. Claim 48 is intended.
Appeal 2009-010332
Application 11/037,541
3
Panel overlooked or misapprehended a matter in rendering the Decision. It is
a well-nigh insurmountable burden to convince this Board that we have
overlooked material that was not submitted. Prescience is not a required
characteristic of the Board. Cf. Keebler Co. v. Murray Baking Prods., 866
F.2d 1386, 1388 (Fed. Cir. 1989). The Board need not divine all possible
afterthoughts of counsel that might be asserted for the first time on appeal.
Id.
Secondly, the weight of authority is that the doctrine of res judicata is
inapplicable to the USPTO or the Board:
Appellants’ contention that the prior board decision
reversing a rejection under 35 U.S.C. 103 over Borkowski et al.
in a parent application should have been “res judicata” to the
examiner in this case is unpersuasive. This court stated in In re
Craig, 411 F.2d 1333, 1335-36(1969), that the policy and
purpose of the patent laws preclude the applicability of any
doctrine akin to the judicially-developed doctrine of “res
judicata” to bar the granting of patents on inventions that
comply with the statute. The same policy and purpose precludes
reliance on any such doctrine to force the granting of patents on
inventions that do not comply with the statute. The Patent
Office must have the flexibility to reconsider and correct prior
decisions that it may find to have been in error. As this court
stated in In re Schmidt, 377 F.2d 639, 642 (CCPA 1967), in
sustaining the board's right to grant an examiner's request for
reconsideration and thereafter to reverse its decision favorable
to an applicant:
It is the duty of the Patent Office to satisfy itself in the
first instance that the statutory requirements pertaining to
the obtaining of patents have been met. We are aware of
no authority, and appellants cite none, which precludes
the Patent Office from retaining jurisdiction in the
prosecution of applications and correcting what it
considers to be mistakes in its decisions, until the time
for judicial review has expired or a patent has issued.
Compare In re Citron, 51 CCPA 869, 326 F.2d 418, 140
Appeal 2009-010332
Application 11/037,541
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USPQ 220 [(1964)]. Quite evidently the board simply
overlooked and misapprehended the examiner's reasons
in its first decision, and was convinced of its error upon
review. Under the circumstances we see no abuse of
discretion upon the part of the board in acting as it did
here.
In re Borkowski, 184 USPQ 29, 32-33 (CCPA 1974). Therefore it is
manifestly true that the claim construction in Appellant’s prior appeal is not
binding on this Panel, and the claim construction, in this instance, may be
merely the USPTO correcting what it regards as a mistake in one of its
decisions. Even if, in fact, the claim term was given a different construction
in our Decision by the current Panel, Appellant has not shown that any
matter was overlooked, inasmuch as the Panel has the responsibility to
consider all USPTO issues on its own, correcting past mistake if the Panel is
convinced such mistakes have been made.
Thirdly, we note that a claim term can be construed differently
depending on both the language of the claim and the specification on which
the claim is based. For example, in an interference context, claims with
exactly the same wording are sometimes held to be in a no interference-in-
fact situation. Thus the fact that Appellant’s claim term of “integrate” was
given a different construction in another related case is dispositive of little
with respect to the instant appeal.

Appellant’s Second Argument
With respect to Appellant’s second argument, i.e., that the Panel’s
current construction of the claim term “integrate” is contrary to the plain
meaning of the term, we disagree. We construed the term “integrate” as “to
become part of.” Decision 3. We see little difference in this definition and
Appeal 2009-010332
Application 11/037,541
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the definition of “unite or combine” Appellant advances in the Request for
Rehearing. Req. Reh’g 6. Next, we found that the floor covering, carpeting
28’ of Schmitt in Fig. 5, was integrated with channel 35, floor panels 7, and
sheet/foil F to form a flooring system. Decision 4. The carpeting is
integrated with the floor system in that it is applied to the floor panels and
foil, and particularly because it has apertures that are in registration with the
HVAC outlets and electrical receptacles. Schmitt, col. 2, ll. 55-66. Appellant
chose what we regard as a relatively broad term “integrate” which does not
read over the arrangement taught in Schmitt. Appellants broadened the scope
of that term by reciting “clamping means for coupling said fastener with said
housing to thereby integrate said floor cover and said raceway” in claims 32
and 44, which depend from independent claims 23 and 37, respectively. See
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (2005) (en banc) (the presence
of a dependent claim adding a particular limitation creates a presumption
that the limitation in question is not present in the independent claim).
Although claims 32 and 44 recite clamping means that integrate the floor
cover and raceway, Appellants ask us to read that feature into independent
claims 23 and 37. See Req. Reh’g 6 (“The floor covering runs up and over
sides of a raceway to a trough, where it is clamped in place by a fastener and
housing, thereby ‘integrating’ the floor cover and raceway.”). The doctrine
of claim differentiation is at its strongest where, as here, Appellants ask us to
read a “clamping” feature from a dependent claim into the term “integrate”
in independent claims 23 and 37. Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 910 (Fed. Cir. 2004). Appellants disclose the term “clamp” and
derivatives include any brace, clip, clasp, grip, vise, attachment, anchor,
hook, catch, glue, tack, screw, bolt, rivet, staple or the like. Spec. 19, ll. 5-9.
Thus, we do not agree that our construction of the claim term in our
Appeal 2009-010332
Application 11/037,541
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Decision was unreasonably broad or contrary to the plain meaning of the
term.

DECISION
The Request for Rehearing is granted to the extent that the Panel has
reviewed its prior Decision, however, it is denied with respect to making any
changes to the prior Decision. This opinion is now final for purposes of
judicial review.

DENIED

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