Ex Parte Sveen

Patent Trial and Appeal Board

Jul 27, 2017

11919887 (P.T.A.B. Jul. 27, 2017)

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.
11/919,887 02/12/2008 Dagfinn Sveen 2007 1953A 7328
513 7590 07/31/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
07/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAGFINN SVEEN
Appeal 2015-006030
Application 11/919,887
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Dagfinn Sveen (“Appellant”), on July 18, 2017, filed a Request for
Rehearing (“Request”) in response to our Decision mailed May 18, 2017
(“Decision”). In the Decision, we affirmed the Examiner’s rejection of
claims 13 and 15—24 under 35 U.S.C. § 103(a) as unpatentable over Tatsuya
(JP2002-188557A, pub. July 5, 2002) and Harvey (US 3,837,308, iss.
Sept. 24, 1974) and combinations based thereon.
After consideration of Appellant’s Request, we do not modify our
Decision.
Appeal 2015-006030
Application 11/919,887
APPELLANT’S ASSERTION
In the instant case, Appellant asserts that we did not “adequately”
consider the facts presented in the Declaration of Linn Gunnar Nielsen.
Request. 2.
ANALYSIS
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.L.R. § 41.52. A request for rehearing ‘“must state with particularity the
points believed to have been misapprehended or overlooked by the Board”’
and “must specifically recite ‘the points of law or fact which appellant feels
were overlooked or misapprehended by the Board.’” Ex parte Quist, 95
USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting MPEP
§ 1214.03).
A request for rehearing may not rehash arguments originally made in
the Brief. A request for rehearing is not an opportunity to merely express
disagreement with a decision. The proper course for an applicant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided. See
35U.S.C. §§ 141, 145.
In the Request, Appellant concedes that we applied the appropriate
legal test for analogous art. Request 2. Nevertheless, Appellant asserts that:
“[tjhere is no factual basis for the Board’s conclusion.” Request 3.
Appellant further argues that our Decision “completely contradicts the facts
and technical explanations set forth in the Nielsen expert declaration.” Id.
Appellant further contends that the Decision “does not address or contest
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Appeal 2015-006030
Application 11/919,887
one fact set forth in the Nielsen declaration,” and that “the conclusions
reached by the expert in the field are given little or no weight” in deciding
that Harvey is from the same field of endeavor as Appellant’s invention.
In the Decision, we noted that “Appellant supports the non-analogous
art argument with declaration testimony from Finn Gunnar Nielsen.”
Decision 4. We further expressly found that:
we are not persuaded by Appellant's argument or declaration
testimony that Harvey is non-analogous art because it is directed
to solving a different problem than the yaw problem addressed
by Appellant's invention. Appeal Br. 6, Nielsen Dec.
Decision 8. In reaching our Decision, we reviewed and carefully considered
Mr. Nielsen’s testimony and accorded it the weight that it properly deserved.
Nevertheless, the preponderance of the evidence supports the Examiner’s
finding that Harvey is analogous art.1
Taken to its logical conclusion, Appellant’s position is that each type
of floating object defines a separate field of endeavor from that of every
other type of floating object when it comes to designing a mooring system.
After several millennia of human history in maritime operations, we find this
position to be untenable. Contrary to Appellant’s contentions, we did not
misapprehend Nielsen’s testimony, we simply disagreed with its ultimate
conclusion regarding whether Harvey is from the same field of endeavor and
whether it is reasonably related to the problem to be solved. After carefully
considering the respective positions taken by Appellant and the Examiner,
we find the Examiner’s position to be more persuasive notwithstanding
Nielsen’s testimony. In short, we remain persuaded that a designer of
1 As we mentioned in our Decision, whether a prior art reference is
"analogous" is a question of fact. Decision 6 citing Innovention Toys, LLC
v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
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Appeal 2015-006030
Application 11/919,887
ordinary skill seeking to design a mooring system for a new type of floating
vessel would look to known mooring systems for other types of floating
vessels as an integral and routine part of the engineering and design process.
With that in mind, a person of ordinary skill in the art would have looked to
Harvey under either prong of the Bigio/Clay test to design a mooring system
for a floating wind turbine.
In view of the foregoing, Appellant’s Request does not persuade us
that this panel's Decision overlooked or misapprehended any matter or that
we erred in affirming the Examiner's unpatentability rejections of claims 13
and 15—24.
DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in the Request, but is
denied with respect to our making any modification to the Decision. Upon
reconsideration, the rejection of claims 13 and 15—24 remains affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2011).
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