Ex Parte Vercauteren

Board of Patent Appeals and Interferences

Dec 20, 2010

11148098 (B.P.A.I. Dec. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID R. VERCAUTEREN
____________________

Appeal 2009-001305
Application 11/148,098
Technology Center 3600
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-001305
Application 11/148,098

2
David R. Vercauteren (Appellant) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of
our Decision dated October 19, 2010 (“Decision”) affirming the rejection of
claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Wilson (US
4,300,268, issued November 17, 1981) in view of Robinson (US 1,565,501,
issued December 15, 1925). Appellant asserts that we have misapprehended
or overlooked one or more points that pertain to the rejection. We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
Appellant first argues that the rationale advanced by the Examiner for
modifying the Wilson device in view of the teachings of Robinson, namely,
that the modification would allow papers to be clipped from either end of the
paper clip, so that the paper clip need not be turned end for end to position it
for operation, “makes no sense for several reasons.” (Request 3). Appellant
advances essentially only one reason why the rationale purportedly “makes
no sense”, to wit, that the functionality provided by the modification is
already present in the unmodified Wilson device. (Id.).
This argument fails to establish that we overlooked or
misapprehended any points that were argued on appeal. The argument
simply was not made by Appellant in the Appeal Brief filed October 13,
2007.2 No Reply Brief was filed. “Arguments not raised in the briefs before
the Board . . . are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R.

2 As best understood, the Appeal Brief, at page 39, appears to make the
contrary argument, i.e., that the ability to insert papers from either end
without reorienting the clip is “correct” as it pertains to Robinson, but is not
“correct” as it pertains to Wilson. That argument failed to address the
modified Wilson device.
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Application 11/148,098

3
§ 41.52(a)(1). Appellant has not shown good cause as to why this new
argument is entitled to consideration under 37 C.F.R. § 41.52(a)(2), and 37
C.F.R. § 41.52(a)(3), directed to new grounds of rejection, does not apply.
We are also not persuaded, even considering the new argument, that
the unmodified Wilson device has the same ability, at both ends, to accept
papers to be clipped. The insertion of papers at the bottom (oriented as
shown in Figure 1 of Wilson) between loops 22 and 30 (second and fourth
generally arcuate portions, using Appellant’s claim terminology) would
result in the leading edge of the papers encountering terminal ends 16 and 40
of the clip, which, being in the same plane as the papers, would seemingly
preclude the papers from being securely clipped, or at least would interfere
with fully inserting the papers. Modifying the Wilson device to have the
second and fourth generally arcuate portions not positioned in a common
plane, as taught by Robinson, would avoid this situation and allow the
papers to be fully inserted and securely clipped.
Appellant further attacks our position that the rejection could be
regarded as an application of a known technique to a known device ready for
improvement, to yield a predictable result. (Request 5). Appellant contends
that the position is “[conclusory], self-serving, and without any factual
basis.” (Id.). More specifically, Appellant cites to page 5 (near the bottom)
of the Decision, and alleges that the Decision “is [conclusory] because the
Board has failed to tell how such an improvement is done”, that “it is self-
serving because without any facts the Board expects the Appellant to believe
such a rejection is valid”, and “there is no factual basis for the Board’s
contention”. (Id.). Appellant buttresses these allegations by stating that the
Board failed to identify the known technique, the known device, the
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Application 11/148,098

4
improvement obtained, and the predictable result. (Id.).
Appellant’s attention is directed to the paragraph bridging pages 6 and
7 of the Decision, which quite clearly identifies the elements supporting this
particular rationale for concluding that the subject matter of the claims on
appeal would have been obvious to a person of ordinary skill in the art. We
are not persuaded that we misapprehended or overlooked any particular
points in this respect.
Finally, Appellant appears to assert that we have misapprehended the
argument advanced by Appellant in the Appeal Brief, to the effect that the
combination of teachings destroys one or the other of the devices disclosed
in Wilson or Robinson. (Request 7-8). Appellant contends that the
functionality of the claimed invention, namely that two groups of papers are
to be inserted only from one “proper” end and that both groups of papers
will be aligned at the top so that the top edges of the groups meet closely, is
not obtained in the Wilson device, modified by Robinson, as proposed by
the Examiner. (Request 7). Appellant thus urges that “the combination of
references DOES not have these features and therefore they are destroyed
trying to achieve that.” (Id.).
The modification to the Wilson device proposed by the Examiner, in
view of the teachings of Robinson, meets all of the structural limitations set
forth in the claims. Thus, it is not germane to the determination of
unpatentability whether the combined teachings of the prior art provide
some, all, or any of the functionality of the claimed invention, particularly in
the absence (as is the case here) of functional language in the claims that
might be argued to distinguish the invention over the prior art.
Moreover, as was essentially the case with the Appeal Brief,
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Application 11/148,098

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Appellant provides no explanation as to how the Wilson device (the function
of the Wilson device) would be destroyed by making the modifications
proposed by the Examiner. Contending only that it would, without any
substantiation, does not make it so. We are not persuaded that we
misapprehended or overlooked any point in this respect.

DECISION
The Request for Rehearing has been fully and carefully considered,
and is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

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