Ex Parte Weber et al

Patent Trial and Appeal Board

Aug 2, 2016

12822055 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/822,055 06/23/2010
23377 7590 08/04/2016
BAKER & HOSTETLER LLP
CIRA CENTRE 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891
FIRST NAMED INVENTOR
Klaus Johannes Weber
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
104395.000010 5054
EXAMINER
STARK, JARRETT J
ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS JOHANNES WEBER
and ANDREW WILLIAM BLAKERS
Appeal2014-006537
Application 12/822,055
Technology Center 2800
Before MARK NAGUMO, GEORGE C. BEST, and BRIAND. RANGE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our June 16, 2016 Decision. See
Request for Rehearing (July 27, 2016). In that Decision, we reversed the
Examiner's rejection of claims 1-11, 13-16, 45, and 46 as unpatentable over
the combination of Ricaud and Kondo. Decision 5. Appellants did not seek
review of the rejection of claim 17 as anticipated by Kaplow or of the
rejection of claims 25-37, 39--44 and 47-55 as unpatentable over the
combination of Ricaud, Kondo, and Nath and/or Kay. See Appeal Br. 3.
We, therefore, summarily affirmed these rejections. Decision 3. Nor did
Appellants present any substantive arguments for the reversal of the
rejection of independent claim 17 as unpatentable over the combination of
Appeal2014-006537
Application 12/822,055
Ricaud and Kondo. See Appeal Br. 3-10. Thus, we also summarily
affirmed the rejection of claim 17 and of claims 18-24 which depend
therefrom. Decision 5---6.
In a request for rehearing, an appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52. We review the points of the Decision contested by
Appellants and determine whether we erred in fact finding or applying the
law, and further determine whether any such error changes the outcome of
the Decision when viewing all the evidence and arguments anew in light of
the preponderance of the evidence standard. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) ("patentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument"); Gardner v. TEC Sys., Inc., 725 F. 2d 1338,
1344 (Fed. Cir. 1984) (any error concerning nonessential facts is harmless
and not a basis for reversal). We do not give our original Decision any
deference, whether under the "clearly erroneous," "arbitrary and capnc10us,"
or "substantial evidence" standards of review.
In their request for rehearing, Appellants-for the first time-ask us
to reverse the rejection of claims 47-55 as unpatentable over the
combination of Ricaud, Kondo, and Nath and/or Kay. Request 1.
Appellants state that "[i]t is believed that the Board overlooked or
misapprehended the fact that claims 47-55 depend directly/indirectly from
claim 45, a claim found to be patentable due to it containing the 'adhesive'
requirement." Id. at 2.
Appellants argue that "the pending claims 47-55 are patentable for the
reasons set forth by the Board further independent claim, claim 45,
notwithstanding a separate argument by Appellants." Id. (citing In re Fine,
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Application 12/822,055
837 F.2d 1071, 1076 (Fed. Cir. 1988)). Appellants further note that the
Board's rules provide that "the rules 'shall be construed to secure the just,
speedy, and inexpensive resolution of every proceeding before the Board."'
Id. (quoting 37 C.F.R. § 41.l(b)).
For the following reasons, we are not persuaded by Appellants'
arguments. We, therefore, deny Appellants' Request for Rehearing.
First, the Board's rules provide:
(a) ( 1) Appellant may file a single request for rehearing
within two months of the date of the original decision of the
Board. . . . The request for rehearing must state with
particularity the points believed to have been misapprehended
or overlooked by the Board. Arguments not raised, and
Evidence not previously relied upon, pursuant to§§ 41.37,
41.41, or 41.47 are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this
section. When a request for rehearing is made, the Board shall
render a decision on the request for rehearing. . ..
(2) Appellant may present a new argument based upon
a recent relevant decision of either the Board or a Federal
Court.
(3) New arguments responding to a new ground of
rejection designated pursuant to§ 41.50(b) are permitted.
( 4) New arguments that the Board's decision contains
an undesignated new ground of rejection are permitted.
37 C.F.R. § 41.52 (2013).
In this case, we conclude that Appellants' Request raises arguments
not previously relied upon in Appellants' Appeal Brief or Reply Brief. As
identified in our Decision, the Examiner entered three Grounds of Rejection
with respect to the '055 Application's claims. Decision 3.
Appellants' Appeal Brief, in a section entitled "Grounds of Rejection
to be Reviewed on Appeal," only identifies one of these grounds of
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Application 12/822,055
rejection. Appeal Br. 3. Thus, Appellants only sought our review of one
ground of rejection. Claims 47-55 were not subject to this ground of
rejection.
Furthermore, the argument section of Appellants' Appeal Brief does
not present any arguments for reversal of the rejection of claims 47-55. See
id. at 3-10. Appellants' Reply Brief also is silent regarding the alleged
patentability of claims 47-55. See Reply Br.
In view of the foregoing, we conclude that Appellants did not raise the
question of patentability of claims 47-55 over the combination of Ricaud,
Kondo, and Nath and/or Kay. Thus, Appellants' arguments for reversal of
the rejection of these claims in their Request for Rehearing are new.
Furthermore, Appellants' new arguments do not fall within any of the
enumerated exceptions to the general prohibition on new arguments in a
Request for Rehearing. Thus, Appellants' arguments are improper.
Second, as discussed above, Appellants' Request argues, for the first
time, for reversal of the rejection of claims 47-55. In reaching our Decision,
therefore, we did not overlook or misapprehend the question of the
patentability of these claims over the Examiner's asserted prior art. One
cannot misapprehend or overlook arguments that were never made and,
therefore, have been waived.
It is clear that an appellant can waive arguments before the Board. As
the Federal Circuit has stated
When the appellant fails to contest a ground of rejection to the
Board, section 1.192( c )(7) imposes no burden on the Board to
consider the merits of that ground of rejection on the basis of a
representative claim. Rather, the Board may treat any argument
with respect to that ground of rejection as waived. In the event
of such a waiver, the PTO may affirm the rejection of the group
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Application 12/822,055
of claims that the examiner rejected on that ground without
considering the merits of those rejections.
Hyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) (discussing
predecessor to 37 C.F.R. § 41.37(c)(l)(iv)); see also Manual of Patent
Examining Procedure§ 1205.02 (8th ed., rev. 9 Aug. 2012) ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.").
Third, contrary to Appellants' argument, In re Fine does not require
us to reverse the rejection of claims 47-55. Although we reversed the
rejection of their parent independent claim, claim 45, dependent claims 47-
55 are subject to a different Ground of Rejection than claim 45. In
particular, the rejection of claims 47-55 are based upon two references-
Nath and Kay-that were not relied upon by the Examiner in rejecting claim
45. Final Act. 9. Because Appellants did not seek reversal of the rejection
of claims 47-55 in their Appeal Brief, we have not considered the merits of
the Examiner's rejection, including whether or not Nath and/or Kay cure the
defects that let us to reverse the rejection of claim 45. We decline to do so
in the first instance in response to Appellants' Request for Rehearing.
Fourth, the result here furthers the purpose of37 C.F.R. § 41.l(b). As
Appellants note, § 41.1 (b) states that "[ t ]he provisions of Part 41 shall be
construed to secure the just, speedy, and inexpensive resolution of every
proceeding before the Board."
This policy provision, however, must be with an eye toward the
Board's role in the patent application process and in the context provided by
the entire body of Board's rules.
The statutory provision that establishes the Board's existence states
that we shall, "on written appeal of an applicant, review adverse decisions of
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Application 12/822,055
examiners upon applications for patents pursuant to section 134(a)." 35
U.S.C. § 6(b)(l). To increase the speed and lower the cost of our review of
appeal the decisions, we do not conduct a de nova review of an examiner's
decision. Rather, our rules require an appellant to identify both the grounds
of rejection for which review is sought and the particular errors that
appellants assert justify reversal of these grounds of rejection. For example,
the rules in force when Appellants filed their Appeal Brief state, in relevant
part,
Except as provided for in§§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will
be refused consideration by the Board for purposes of the
present appeal. Each ground of rejection contested by
appellant must be argued under a separate heading, and each
heading shall reasonably identifY the ground of rejection being
contested (e.g., by claim number, statutory basis, and applied
reference, if any).
37 C.F.R. § 41.37(c)(l)(iv) (emphasis added).
By limiting our review to the particular issues identified and raised by
an appellant, the Board's resources are conserved. This streamlines the
overall appeals process and makes it more efficient for every appellant.
CONCLUSION
For the foregoing reasons, we deny Appellants' Request for
Rehearing.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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