Ex Parte Tarnowski

Patent Trial and Appeal Board

Jan 26, 2017

13149054 (P.T.A.B. Jan. 26, 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.
13/149,054 05/31/2011 German Claudio Tarnowski VEST/0209US (060663) 1713
13923 7590 01/30/2017
Patterson Rr SheriHan T T P / Vesitas;
EXAMINER
24 Greenway Plaza, Suite 1600
Houston, TX 77046
KARIM, ZIAUL
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
PAIR_eOfficeAction@pattersonsheridan.com
PS Docketing @ pattersonsheridan .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERMAN CLAUDIO TARNOWSKI
Appeal 2016-000377
Application 13/149,054
Technology Center 2100
Before JOHNNY A. KUMAR, MATTHEW J. McNEILL, and
SCOTT E. BAIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-000377
Application 13/149,054
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)
(“Request”) on December 20, 2016, for reconsideration of our Decision
mailed October 25, 2016 (“Decision”). The Decision affirmed the
Examiner’s rejections of claims 1—18. We reconsider our decision in light of
Appellant’s Request for Rehearing, but we decline to change the decision.
We find Appellant’s arguments unpersuasive for the reasons given in
our prior Decision. Decision 5—6. We agree with the Examiner’s findings
(Ans. 3—20) that claims 2—5 are unpatentable under 35 U.S.C. § 103(a) over
Rocabert and Thisted for the reasons given in the Final Rejection and
Examiner’s Answer.
According to Appellant, our prior Decision did not consider
Appellant’s arguments presented in the Appeal Brief for claims 3, 4, and 5.
Request 2. In particular, Appellant contends, “Although the Decision
mentions dependent claims 2—5 within the context of identifying contention
(2), the Decision plainly does not address any of the specific claim language
that is recited in claims 3, 4, and 5 and that had been separately argued by
the Appellant in the Appeal Brief.” Request 3 (emphasis added).
Our prior Decision is based upon the factual findings stated by the
Examiner in the Final Office Action of August 27, 2014, and the Answer
mailed July 20, 2015. We disagree with Appellant’s contention because it
misstates the facts of record. Contrary to Appellant’s contention, this Board
did not merely presume that the Examiner is correct. Rather, as the panel
stated:
We agree with the Examiner and adopt as our own (1)
the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by
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Appeal 2016-000377
Application 13/149,054
the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief.
Decision 5 (emphasis added). Adoption of the Examiner’s findings and
reasons can form an adequate record to permit judicial review. In Hyatt, the
Federal Circuit explicitly pointed out that “[t]he Board adopted the
examiner’s findings” and “[t]he Board adopted the examiner’s analysis.” In
re Hyatt, 211 F.3d 1367, 1370—71 (Fed. Cir. 2000). The court in Hyatt then
concluded that “the Board addressed the limitations of each claim in a
manner adequate to permit judicial review” and the court “decline[d] the
invitation to vacate the Board’s decision on the ground that [the Board]
failed to explain its reasoning sufficiently to enable us to review its rulings.”
Id. at 1371. Further, Appellant’s attention is directed to the court’s Rule 36
decision in In re Carnahan, 440 F. App’x 927 (Fed. Cir. 2011)
(nonprecedential), where the Federal Circuit affirmed the Board decision in
Ex parte Carnahan, Appeal 2010-011437 (BPAI Jan. 13, 2011), which
“incorporate[d] ... by reference” the Examiner’s Answer {id. at 2).
As to Appellant’s argument that the Board has erred because the
Board did not review the particular findings contested for dependent claims
2—5 and failed to directly consider all of Appellant’s arguments (Request 2),
we disagree with Appellant’s conclusion that this panel erred. Appellant, in
making general allegations, appears to argue that this Board erred by not
providing an individualized critique of each argument that Appellant
presented for dependent claims 2—5 in the Appeal Brief and Reply Brief.
However, as stated above, our prior Decision is based upon the factual
findings stated by the Examiner in the Final Office Action of August 27,
2014, and the Answer mailed July 20, 2015.
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Appeal 2016-000377
Application 13/149,054
Moreover, this panel did not state in its decision that it was not
reviewing the particular findings contested for claims 3—5 and did not state
that it was not considering Appellant’s arguments. Instead, this panel
considered all of Appellant’s argument in its deliberations and reviewed the
particular findings contested in Appellant’s Briefs. This panel did not err in
not discussing individually each of Appellant’s arguments in its ultimate
decision. We also note that Appellant grouped the arguments for dependent
claims 3-5 with the argument for claim 2. See App. Br. 17 (“The rejection
of dependent claims 3-5 suffer from similar deficiencies as those discussed
above with respect to claim 2.). The prior Decision explicitly addressed
Appellant’s arguments related to claim 2 and incorporated the Examiner’s
findings related to claims 3-5, as well.
Thus, Appellant has not persuaded us that we overlooked an argument
in the Appeal Brief, nor has Appellant persuaded us of error in our decision.
We decline to change our prior Decision.
CONCLUSION
For the aforementioned reasons, Appellant’s contentions have not
persuaded us of error in our Decision mailed October 25, 2016.
Accordingly, while we have granted Appellant’s Request for
Rehearing to the extent that we have reconsidered our decision, that request
is denied with respect to making any changes 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)(l)(iv).
REHEARING DENIED
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