10679088 - (D) (P.T.A.B. Mar. 25, 2013)

Ex Parte Williams

Patent Trials and Appeals BoardMar 25, 2013

10679088 - (D) (P.T.A.B. Mar. 25, 2013)

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. 10/679,088 10/03/2003 Marcus K. Williams MARCUS#1 3534 7590 03/26/2013 W. Edward Johansen 11661 San Vicente Boulevard Los Angeles, CA 90049 EXAMINER HALE, GLORIA M ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 03/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARCUS K. WILLIAMS ____________________ Appeal 2010-010258 Application 10/679,088 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and BART A. GERSTENBLITH, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-010258 Application 10/679,088 2 STATEMENT OF THE CASE Marcus K. Williams (Appellant) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated January 11, 2013, of our decision mailed November 13, 2012 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Sessoms (US 5,388,271, iss. Feb. 14, 1995), Ross (US 5,134,726, iss. Aug. 4, 1992), and McGee (US 4,089,065, iss. May 16, 1978). Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. OPINION In the Request, Appellant contends, for the first time, “that either a different standard of non-obviousness was applied to [Appellant’s] application [as compared to Cohen (US 8,281,418 B2, iss. October 9, 2012)] or that the Examiner in the later-filed [application] failed to declare an interference.” Request 9. Appellant has not pointed out where such arguments were made in the Appeal Brief or the Reply Brief, and we have not found the arguments in our review of the record. The Board could not have overlooked or misapprehended arguments which were not before it. “Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) 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. § 41.52(a)(1)(2007); see also Ex parte Hindersinn, 177 USPQ 78, 80 (BPAI 1971) (An argument advanced in a petition for reconsideration but not advanced in the principal brief or the reply brief was not properly before the Board); cf. Pentax Corp. v. Robison, Appeal 2010-010258 Application 10/679,088 3 135 F.3d 760, 762 (Fed. Cir. 1998) (citing cases supporting the proposition that issues not raised before the court are not addressed on rehearing). Appellant has not shown good cause as to why these new arguments are entitled to consideration under 37 C.F.R. § 41.52(a)(2)(2007). Additionally, 37 C.F.R. § 41.52(a)(3)(2007) is directed to new grounds of rejection and does not apply. As such, the arguments relating to the purported application of a different standard of obviousness and the failure to declare an interference are improper and untimely when made for the first time in a request for reconsideration. See Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008); see also Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (BPAI 1982), aff’d, 714 F.2d 160 (Fed. Cir. 1983) (table)) (“A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration.”). Appellant also contends the Board misapprehended or overlooked the Examiner’s purportedly improper finding that Sessoms teaches the upper portion of the protective undergarment of Appellant’s claim. Request 10.1 Appellant initially contends that Sessoms discloses “an article of insulated apparel, the integral continuous parts of which include a body and appendages formed of an insulated, resilient fabric material and is not formed of an elastically stretchable material.” Id. (emphasis added). As set forth in the Decision, “[t]he Examiner’s finding that Sessoms discloses an 1 Appellant does not appear to contend that the Examiner erred in finding that Ross teaches the lower portion of the protective undergarment of Appellant’s claim. Request 12 (“the pair of pants of Ross are similar to the lower portion of the protective undergarment of claim 3”). Appeal 2010-010258 Application 10/679,088 4 undergarment formed out of a stretchable fabric is supported by the reference.” Decision 5 (citing Sessoms, col. 3, ll. 49-51 (“[t]he material 16 [forming the sleeves 12 and body 14 of the undergarment] may be . . . synthetic, such as nylon or polyester . . . .”)). Moreover, Appellant acknowledges that the material of the first ply of fabric material may be “synthetic, such as nylon or polyester, or a combination thereof.” Request 11. An ordinary and customary meaning of “nylon” is “any of numerous strong tough elastic synthetic polyamide materials that are fashioned into fibers, filaments, bristles, or sheets and used especially in textiles and plastics.” MERRIAM WEBSTER ONLINE DICTIONARY, available at http://www.merriam-webster.com/dictionary/nylon (last visited on Mar. 4, 2013) (emphasis added). The ordinary and customary meaning of “nylon” supports that Sessoms’ undergarment material is stretchable as recited in Appellant’s claim. Appellant next contends that “the article of Sessoms does not have pockets with protective pads inserted therein” and instead “includes segmentally arranged supplemental insulation for insulating less mobile regions of a user’s body.” Request 10. As set forth in the Decision, “[t]he Examiner’s finding that Sessoms discloses a plurality of pockets with protective pads is also supported by the reference.” Decision 5 (citing Sessoms, col. 4, ll. 14-25, 44-47 (“[a]reas or regions of each of the articles of apparel . . . include segmentally arranged supplemental insulation I, such as a pile, a batting, a down fill, a polyester fill, a fiberfill, or some other known material . . . . [T]he first ply of fabric material 16 and a second ply of fabric material 26 may be stitched so as to form a pocket 38 having a closure 40, as is shown more particularly in FIGS. 2 and 3.”). Appellant has not provided Appeal 2010-010258 Application 10/679,088 5 persuasive evidence or reasoning as to why the supplemental insulation and pockets of Sessoms can not constitute the protective pads and pockets recited in Appellant’s claim. Accordingly, we are not persuaded that the Examiner’s finding that Sessoms teaches the upper portion of the protective undergarment of Appellant’s claims is in error. For the above reasons, the arguments in Appellant’s Request do not convince us that we overlooked or misapprehended any matter or that we erred in affirming the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Sessoms, Ross, and McGee. DECISION Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED Klh