Ex Parte Wingate

Patent Trial and Appeal Board

Dec 29, 2017

13029333 (P.T.A.B. Dec. 29, 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.
13/029,333 02/17/2011 John WINGATE 4928-148 (XA3157) 1520
22429 7590 01/03/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
MATHEWS, CRYSTAL
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
EAnastasio @ IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WINGATE
Appeal 2014-006154
Application 13/029,333
Technology Center 2600
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52
(hereinafter “Request” or “Req. Reh’g”), dated October 31, 2016, of our
Decision mailed August 30, 2016 (hereinafter “Decision”). Appellant
requests rehearing with an expanded panel of our Decision sustaining the
rejection of claims 1—11 and 13—16 under 35 U.S.C. § 103(a).
We have reconsidered our decision in light of Appellant’s Request for
Rehearing, but we decline to expand the panel or change the Decision.
Appeal 2014-006154
Application 13/029,333
THE REQUEST FOR REHEARING
A request for rehearing is not an opportunity to merely express
disagreement with a decision. See 35 U.S.C. §§ 141, 145. A request for
rehearing must state with particularity the points believed to have been
misapprehended or overlooked. Arguments not raised in the briefs before
the Board and evidence not previously relied upon in the briefs are not
permitted in the request for rehearing. See 37 C.F.R. § 41.52(a)(1).
Permitted new arguments are limited to: (a) new arguments based upon a
recent relevant decision of either the Board or a Federal Court; (b) new
arguments responding to a new ground of rejection designated pursuant to
§ 41.50(b); or (c) new arguments that the Board’s decision contains an
undesignated new ground of rejection. See 37 C.F.R. § 41.52(a)(2)-(4).
Appellant seeks a rehearing (i) arguing the judge authoring the
Decision may have been biased and, because of his experience in the
technology of the invention, may unduly influence the other members of the
panel; and (ii) “based on the numerous points misapprehended and
overlooked in the Decision.” Req. Reh’g 2.
ANALYSIS
A. Request for Expanded Panel
Appellant requests an expanded panel on rehearing because of alleged
bias of the authoring judge against Appellant’s law firm. Req. Reh’g 2, 5—
19. This issue was previously presented in connection with Appellant’s
Petition to Have Decision by the Board Vacated Due to Bias Issues
Associated with ALJ Who Authored Decision filed contemporaneously with
the instant Request on October 31, 2016 (“Petition”). Appellant’s
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allegations of bias were found to lack merit and the Petition dismissed by
and for the reasons presented in the Decision on Petition dated
September 13, 2017. We herein adopt the findings and conclusions of that
decision. Accordingly, we find no bias against Appellant’s law firm.
Appellant further contends the authoring judge’s bias in combination
with his experience in the field of aviation “could have presented a powerful
dynamic that was difficult to resist by the other members of the panel.” Req.
Reh’g 2. As indicated above, no bias was found. In connection with the
judge’s expertise resulting in undue influence over the other members of the
panel, Appellant does not cite to any legal basis in support of such a reason
for disqualification of a judge. We are unaware of any precedent in which a
judge’s familiarity with a particular technology was found to result in the
judge exercising undue influence over a panel’s decision, and Appellant has
provided neither evidence nor a legal basis to justify belief such undue
influence has been exercised in the instant appeal.
Appellant’s request for an expanded panel was referred to the Chief
Judge for his consideration. For the reasons discussed supra and in the
Decision on Petition, the Chief Judge has denied Appellants’ request.
B. Appellant’s Contention the Wrong Person of Ordinary Skill Was Used
Appellant contends the Board mischaracterized and, according to
Appellant, misapprehended or overlooked Appellant’s argument concerning
the level of skill of the hypothetical person of ordinary skill in the art. Req.
Reh’g 20-21. Appellant argues our finding that we were “not persuaded the
level of skill in the aircraft braking arts excludes a knowledge of physics
such that those skilled in the art would not appreciate the relationship
between brake friction, braking forces, and energy” demonstrates we
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misapprehended their argument. Req. Reh’g 20 (quoting Decision 8).
Appellant argues the issue was not whether one skilled in the aircraft
braking arts excluded a knowledge of physics, but that the Examiner erred in
finding the combination to be obvious to the person of ordinary skill in the
art of physics rather than the asserted art of aircraft braking. According to
Appellant, the distinction is critical
because what would be obvious to a physicist, who is inclined to
experiment and seek out natural phenomena, is not obvious to
the person in the aircraft braking arts, who is inclined to make
sure that the brakes work so that 2 or 3 or 4 hundred people do
not die, and thus is not included to make modifications to the
prior art simply because it could be done.
Req. Reh’g 20-21; see also App. Br. 22.
Appellant’s argument is unpersuasive because it is not supported by
sufficient evidence to rebut the Examiner’s conclusion the combination of
prior art teachings would have been obvious.1 Attorney argument is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such
argument take the place of evidence lacking in the record. Meitzner v.
1 In full consideration of Appellant’s arguments, we find the
Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. at 398, 418 (2007) (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In contrast,
Appellant fails to provide persuasive evidence or explanation
showing the Examiner’s asserted combination is anything other
than the combination of familiar elements yielding no more than
predictable results. See KSR, 550 U.S. at 416—17. Such a
combination is itself a sufficient reasoning with rational
underpinning to support a finding of obviousness.
Decision 8; see also Final Act. 9-12 and Ans. 19-20 (explaining reasons for
combining the references).
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Mindick, 549 F.2d 775, 782 (CCPA 1977). The issue is not who the person
of ordinary skill is, whether a physicist or an aircraft brake designer, but
what that person would have known along with his or her level of skill.
Thus, Appellant’s argument contesting who that person is rather than what
the person of ordinary skill would have known is not persuasive of Examiner
error. In any case, we find insufficient support for the argument that aircraft
brake designers or any other asserted person skilled in the applicable arts
would have resisted or hesitated in making the argued modification. That is,
Appellant fails to provide sufficient evidence that potential safety issues
raised by the asserted modification are so insurmountable and onerous as to
cause the relevant art to stagnate because of a hesitancy of the artisan to
“modify something that works properly.” Rather than explain why the
Examiner’s rationale is deficient, Appellant argues one skilled in the art
would not make the modification unless motivated by recognition that the
prior art systems are broken. That is not the test for obviousness. The
Supreme Court has clearly stated an ordinarily skilled artisan can “fit the
teachings of multiple patents together like pieces of a puzzle” because she or
he is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
420, 421.
Applying the correct standard, we found “the Examiner has articulated
reasoning with rational underpinnings sufficient to justify the legal
conclusion of obviousness.” Decision 8 (citing KSR, 550 U.S. at 417, 419);
see also Final Act. 9-12 and Ans. 19-20 (explaining reasons for combining
the references). In contrast, Appellant fails to provide sufficient evidence or
argument to persuade us the combination is improper. For example,
Appellant fails to persuade us the prior art so disparages or otherwise
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discourages the argued modification as to constitute a teaching away of the
asserted combination. Accordingly, Appellant’s argument is not persuasive
that our Decision should be modified.
C. Appellant’s Contention That the “Difference Between” as Recited in
Claim 1 does not Encompass Division
Appellant argues the Board’s finding that Scharpf s disclosure of
using division to determine if one energy value is greater than another
teaches or “at least suggests” the disputed limitation of determining “a
difference between” misapprehends Appellant’s arguments and constitutes a
new ground of rejection. Req. Reh’g 22—25 (citing Decision 5). We
disagree. “The test for obviousness ... is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Therefore, we see no error in our
finding that Scharpf’s use of division renders obvious the disputed step of
determining a differential as a difference between two values, this based on a
finding Scharpf s disclosure suggests finding a difference. Use of the
characterization “suggests” simply emphasizes there is no requirement in
an obviousness analysis for the prior art to “contain a description of the
subject matter of the appealed claim in ipsissimis verbis.'1'’ In re May, 574
F.2d 1082, 1090 (CCPA 1978) (emphasis added). Appellant does not
persuade us of any misapprehension in the Decision or that there is a basis
for determining there is a new ground of rejection—the finding that
ordinarily skilled artisans would have understood subtraction is not the sole
means for determining a difference between two numbers did not change the
thrust of the rejection. See In re Noznick, 391 F.2d 946, 949 (CCPA 1968)
(no new ground of rejection made when “explaining to appellants why
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their arguments were ineffective to overcome the rejection made by the
examiner”).
Appellant further contends our Decision was inadequate, arguing it
was deficient for failure to explain “what standard was applied in developing
the broadest reasonable interpretation” of the disputed limitation. Req.
Reh’g 27. This argument is not persuasive. As we explained, the claims
were “interpreted in light of the specification and with a view to ascertaining
the invention,” keeping in mind that “it does not follow that limitations from
the specification may be read into the claims.” Decision 5 (quoting Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988) (additionally explaining
“that ‘during patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of claim language explored, and
clarification imposed’” (quoting In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
Further, it appears Appellant attempts to shift the burden of
persuasion to the Board and away from Appellant. That is, Appellant’s
argument appears to be improperly based on an unsubstantiated requirement
for this tribunal to provide such explanation that Appellant is persuaded of
the Board’s position. Appellant provides mere attorney argument but
insufficient evidence the Examiner’s claim interpretation is improper.
Appellant further contends claim 1 does not encompass the
mathematical division of Scharpf. Req. Reh’g 29-33. Appellant argues
“[bjecause the [Bjoard misapprehended how the broadest reasonable
interpretation of the claim phrase ‘difference between’ when developed
based on Appellant's specification, . . . and otherwise overlooked this point,
the broadest reasonable interpretation of the claim phrase ‘difference
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between’ [should] be decided anew by rehearing.” Req. Reh’g 31. We
disagree we misapprehended Appellant’s argument. Instead, we found
Appellant’s argument unpersuasive and disagreed with its conclusion. In
particular, we explained “Scharpf s disclosure of determining, through
division, that one energy value is greater than another . . . suggests . . .
determining a difference between the values [and that] determining a
difference [as claimed] includes determining that one value is greater than
another [as disclosed by Scharpf] without necessarily requiring determining
a numeric magnitude of the difference [as determined, for example, by
subtraction]. Decision 5. For emphasis, we note skilled artisans have long
understood that subtraction is not the only way to determine a difference
between two numbers—for example a “percentage difference” is determined
using ratios (or division). To the extent Appellant disagrees with our
analysis, his remedy is appealing to our reviewing court, not requesting a
new rehearing to reargue issues that have already been decided. See 35
U.S.C. §§ 141, 145. Merely because we find Appellant’s arguments
unpersuasive does not mean we misapprehended or overlooked points made
in the Appeal Brief. We merely disagreed.
We are further unpersuaded we either misapprehended or overlooked
Appellant’s arguments for the reasons set forth in the Supplemental Appeal
Brief For Request for Rehearing Pertinent Federal Circuit Opinion Issued
September 26, 2017, filed by Appellant on December 23, 2017 (hereinafter
Supp. Req. Reh’g). As a preliminary matter Appellant fails to identify any
substantial change to the law of claim construction under the broadest
reasonable interpretation applied in this appeal that conflicts with or was
changed by the Court’s decision in In re Smith Int’l, Inc., 871 F.3d 1375,
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1382—83 (Fed. Cir. 2017) (explaining that the broadest reasonable
interpretation is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’”) (quoting In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997)). Smith does not alter the well-settled law that,
during prosecution, we must interpret terms in a claim using “the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d at 1054. As the court explained in In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989), the rationale for this approach is that “during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.”
The crux of the claim interpretation issue here is what the ordinarily
skilled artisan would have understood, in view of Appellant’s Specification,
“determining ... a difference between,” as recited, to encompass. In the
claim at issue in Smith, in view of the underlying specification, the broadest
reasonable interpretation of the claim term “body” excluded other
components such as a mandrel and a cam sleeve, because the specification
described those other components as separate from the body. This is
inapposite to the situation at hand, i.e., the conclusion that skilled artisans
would have understood the use of division as a way to determine a
difference between two numbers. The notoriously well-known use of
“percentage difference” well illustrates this point. This interpretation is
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consistent with the relevant dictionary meanings. See, e.g., www.merriam-
webster.com/dictionary/difference (last accessed Dec. 27, 2017)
(“mathematics', the degree or amount by which things differ in quantity
or measure”). Nothing in Appellant’s Specification contravenes the
plain, ordinary, and reasonably broad meaning of “determining ... a
difference.”
For the reasons discussed supra, we found the Examiner properly
interpreted the disputed claim language as taught or suggested by the prior
art, and we rejected Appellant’s argument that the recitation “difference
between” required calculation by subtracting one quantity from another. We
also disagree with Appellant that “In re Smith makes clear that no decision at
the USPTO prior to September 26, 2017, on issues regarding BRI, can be
presumptively accepted as correct, at least where there is no explanation for
such finding, as is 100% the case here.” Supp. Req. Reh’g 2. Appellant
neither presents new arguments based upon a recent relevant decision of the
Federal Circuit nor states with particularity the points believed to have been
misapprehended or overlooked by the Board. Rather, Appellant reargues
points already considered and addressed.
D. Appellant’s Contention That the Board Misapprehended and
Overlooked Arguments Regarding Equivalence between Hartmann
and Claim 1
Appellant contends it is owed a more detailed explanation by the
Board of why we found unpersuasive Appellant’s argument “The equations
relied on by the Examiner requires a temporal component, and Hartmann
explicitly does not use a temporal component to develop his friction
values.” Req. Reh’g 37; see also id. at 34^41. As acknowledged by
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Appellant, we summarized Appellant’s argument, the Examiner’s response,
and indicated we were not persuaded by Appellant’s argument. Req. Reh’g
34—35 (citing Decision 6—8). Particularly, we adopted the Examiner’s
finding that “Hartmann obtains friction values over ‘short periods’ and,
therefore,. . . includes [the argued] temporal component.” Decision 8. We
further found “[w]e are also not persuaded the level of skill in the aircraft
braking arts excludes a knowledge of physics such that those skilled in the
art would not appreciate the relationship between brake friction, braking
forces, and energy.” Id. As explained by the Examiner, “[s]ince the change
in kinetic energy AK (Halliday: Eq. 11-44, p. 233) is work W, and is [sic] the
rate of change of work (i.e. time derivative of work W) is power P (Halliday:
Eq. 11-47, p. 234), then power P relates to energy AK as follows:”
rX 2 rt2 rt2
AK = W = j dW = I p ■ dt = I p ■ Fn ■ vcom ■ dt
•*x1 h1 •'t1
Ans. 7. Thus, Halliday also teaches or suggests the argued temporal
component, dt, together with the formulas and “physics principles [used] to
convert the physical values of Hartmann from units of force and friction into
total pseudo-energy demand to be absorbed by the wheel brake and total
energy absorbed by the wheel brake, as claimed.” Ans. 7, 16—19. The
Decision particularly directed attention to the Examiner’s detailed
explanation of the relationship between work and energy (the “work-energy
theorem”) (Decision 7—8) including that:
One of ordinary skill in the art at the time of the invention would
have known how to integrate an “additional friction value” for a
“speed and normal force,” obtained during a braking operation
over a short period disclosed by Hartmann using the equations of
Halliday to calculate the change in kinetic energy. In fact,
Scharpf calculates the actual energy signal in this way.
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Ans. 18 (citing Scharpf col. 4,11. 7—12).
Although, Appellant asserts, Hartmann’s disclosure of a temporal
component is not in connection with calculating friction values (App. Br.
37 40; Reply Br. 26—28; Req. Reh’g 34-41), the Examiner relies on the
combination of Hartmann, Halliday, and Scharpf for teaching or suggesting
the disputed calculation, not Hartmann alone. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425).
The Examiner relies on Halliday for teaching calculating the total
energy associated with braking in place of Hartmann’s friction calculation
(Final Act. 7—10), i.e., “[use of] the physics principles taught by Halliday to
convert the physical values of Hartmann from units of force and friction into
total pseudo-energy demand to be absorbed by the wheel brake and total
energy absorbed by the wheel brake.” Final Act. 9. As expressed in the
equations presented by Halliday, the calculation of energy, e.g., work
performed by a system, is based on energy expended or work performed
over a period of time. See, e.g., Halliday p. 234. The Examiner further
relies on Scharpf’s brake effort monitor, which monitors braking by
calculating an actual energy sum from the energy of the actual brake effort,
for teaching total energy absorbed by the wheel brake as claimed. Final Act.
11. Thus, the combination of Hartmann, Halliday, and Scharpf teaches or
suggests using energy as a metric in evaluating braking performance in place
of friction alone or directly. The references further evidence that total
energy is summed over some period of time. Accordingly, as found in our
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Decision, Appellant’s contention is unpersuasive of Examiner error.2
Decision 7—8.
E. Appellant’s Contention Hartmann’s Set Point is not a Statistical
Model
Appellant argues “[t]he issue is not that there is no comparison to a
model. Claim 1 requires a statistical model.” Req. Reh’g 45; see also id. at
42^44. According to Appellant our Decision is deficient for lack of an
explanation concerning why we find no error in the Examiner’s claim
construction and findings in connection with the argued limitation. Req.
Reh’g 46.
Although Appellant mentions the lack of a comparison, the deficiency
emphasized by Appellant was the quantity being compared (i.e., wheel brake
energy differential) not whether a comparison was performed to something
equivalent to a statistical model. “The Examiner has never addressed the
fact that there is no comparison to a statistical model of any wheel brake
energy differential, where the energy differential is a difference between
the (i) total energy absorbed and (ii) the total pseudo-energy demand to be
absorbed for a healthy wheel brake.” App. Br. 19. Appellant does not
explain why the Examiner erred in finding Hartmann’s identification of
brake wear or malfunction as set forth at pages 6—7 and 9 of the Final Action
2 In addressing this issue, Appellant comments “the [hearing] transcript does
not indicate that anyone disagreed with this argument. Maybe they
[(members of the panel)] were tired of listening to me (100%
understandable), but clearly there is an imbalance in the Force.” Req. Reh’g
34. This and any similar sarcastic and potentially disparaging remarks are
not helpful to our review of the record.
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(citing to Hartmann || 6, 7, and 20) fails to teach the recited comparison to a
statistical model.
Furthermore, such argument is not persuasive. The Examiner has
presented a complete and thorough analysis detailing why and how the now-
disputed statistical model is taught or suggested by Hartmann. Final Act. 6—
7, 20; Ans. 13—15. That analysis was incorporated into the Decision.
Decision 3. In particular, with reference to Appellant’s Specification, the
Examiner interprets statistical model to mean that which “establishes values
for the energy differential that distinguish healthy brakes from impaired
brakes.” Ans. 13. The Examiner finds Hartmann’s “data range defines the
‘setpoint value’ and ‘permissible deviation’ that distinguish healthy brakes
from impaired brakes, and thus teaches the claimed comparison with a
‘statistical model,”’ i.e., parameter values that distinguish healthy brakes
from impaired brakes. Ans. 14. In contrast, Appellant merely alleges the
Decision “is conclusory without any explanation as to why anything
proffered in the [] paragraph [detailing the Examiner’s findings] supports
[the] determination [of no reversible Examiner error],” rather than
explaining with particularity what argument was misapprehended or
overlooked. Req. Reh’g 46.
F. Modification of Hartmann
1. Appellant’s Contention There Is No Utility for the Modification of
Hartmann
Appellant argues this Board erred by not considering the conservative
nature of the person of skill in aircraft braking arts, which would result in a
hesitancy to make the asserted modification because, as Appellant asserts,
“the Examiner never cites any utility for the modification of Hartmann.”
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Req. Reh’g 51; see also id. at 50-53; App. Br. 21—23. Such argument is
unpersuasive of error in our Decision for the reasons discussed supra
including (i) Appellant’s failure to provide evidence of, for example, a
resultant teaching away by the prior art to the making of the disputed
modification and (ii) lack of persuasive argument traversing the Examiner’s
articulated reasoning for combining the teachings of the references.
2. Appellant’s Contention the Wrong Person of Ordinary Skill Was
Used
Appellant alleges “the wrong person of ordinary skill in the art has
been utilized,” i.e., a physicist rather than the person of ordinary skill in the
aircraft braking arts. App. Br. 21. We acknowledged such argument
(Decision 6) but found the argument unpersuasive because “Appellant has
failed to provide sufficient evidence that the Examiner has applied an
incorrect standard in determining the level of skill in the art” (Decision 8).
Appellant has not explained why our finding indicates we misapprehended
or overlooked any argument addressing that point of contention other than to
repeat argument alleging a hesitancy of aircraft brake designers to make
modifications to existing safety critical components, such as aircraft brakes.
Req. Reh’g 51.
Appellant further argues we did not consider argument that the
“‘equivalence’ between Hartmann and claim 1 is meaningless, or at
least the Examiner has not established that it is meaningful, to
determining obviousness.” Req. Reh’g 53; see also id. at 54. The
“equivalence” argument appears to allege the combination of the references
to teach the disputed modification is improper because Hartmann fails to
teach the equivalence of monitoring friction and monitoring energy in
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evaluating brake performance. However, we found the argument that the
combination was improper to be unpersuasive under the KSR standard for
the reasons articulated by the Examiner. Decision 8 (citing Ans. 19—20).
Other than disagreeing with our analysis, Appellant fails to identify any
points misapprehended or overlooked.
3. Appellant’s Contention the Combination Is Based On a Rube
Goldberg Modification
Appellant contends the combination of references is improper,
alleging we mischaracterized Appellant’s arguments. Req. Reh’g 55. In
particular:
Appellant believes it established that Hartmann is a system that
is simple and straight forward, and the rationale to modify it
amounts to a physics experiment instead of a modification that
would have been undertaken by the person of ordinary skill in
the art. It is a Rube Goldberg modification that only is
reasonable if one treats Hartmann as a physics experiment
instead of a functional system having utility.
Id. Appellant’s contention that we did not properly consider arguments that
the combination of Hartmann, Halliday, and Scharpf is improper is not
persuasive for the reasons discussed supra.
4. Appellant’s Contention the Rationale to Modify Hartmann is
Circular and Rests on Impermissible Hindsight.
Appellant contends we failed to address the argument “there was no
rationale to modify Hartmann, and that the statements by the Examiner are
nothing more than a statement that Hartmann can be modified.” Req. Reh’g
56. We addressed this argument by concluding “in full consideration of
Appellant’s arguments, we find the Examiner has articulated reasoning with
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rational underpinnings sufficient to justify the legal conclusion of
obviousness.” Decision 8.
5. Appellant’s Contention the Examiner did not Consider the Claimed
Invention as a Whole
Appellant contends we did not consider the argument that the
Examiner applied the art in a piecemeal fashion and failed to consider the
claimed invention as a whole. Req. Reh’g 56—57; see also App. Br. 41—43.
We identified Appellant’s arguments on this point (Decision 7), indicating
“in full consideration of Appellant's arguments, we find the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness” (Decision 8). Furthermore, other than
alleging elements missing from Hartmann (App. Br. 42-43), Appellant fails
to identify particular elements missing from the combined teachings of
Hartmann, Halliday, and Scharpf. Instead, Appellant makes the generalized
allegation that the Examiner erred because “reading the obviousness
rejections detailed in the Office Action as a whole, it can be clearly seen that
the invention as a whole has not been evaluated, but instead, it has been
treated as simply a group of differences from the prior art that are merely in
need of a rationale to eliminate those differences.” App. Br. 42. Absent
argument particularizing the alleged error in the context of failure of the
combination of the prior art as teaching or suggesting identified claim
limitations, we fail to agree the Decision is inadequate or should be
modified.
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G. Presumption Regarding the Level of Skill
Appellant asserts “[t]he Board overlooked Appellant’s argument that
the presumption that the Examiner properly ascertained the level of skill in
the art should not be given. The focus here is the presumption. The
misapprehension in the Decision is that the Board treats the presumption as
unrebuttable, which it is not.” Req. Reh’g 57. Appellant contends “[t]he
Board[’s] decision [] cite[s] various truisms about the level of skill in the art,
but never addresses the simple fact of whether Appellant has rebutted the
presumption based on the facts and evidence.” Req. Reh’g 59. We disagree,
having found Appellant’s argument “unpersuasive because, in the absence of
other evidence addressing the level of skill, it is presumed to be represented
by the references themselves.” Decision 3 (emphasis added). Attorney
argument is not a substitute for evidence. Pearson, 494 F.2d at 1405.
Although Appellant argues “[w]hat is obvious to a physicist may very well
not be obvious to an aircraft braking system designer,” insufficient evidence
is presented concerning the appropriate level of skill that would conflict with
the Examiner’s findings and demonstrate Examiner error.
DECISION
For the reasons discussed supra, Appellant has failed to persuade us of
the need for an expanded panel or that we have misapprehended or
overlooked any of Appellant’s arguments or other points made by Appellant.
Additionally, the Chief Administrative Patent Judge declines Patent Owner’s
suggestion for an expanded panel. Therefore, Appellant’s Request for an
Expanded Panel is denied, and Appellant’s Request for Rehearing has been
granted to the extent that our Decision has been reconsidered but is denied
with respect to making any modifications to the Decision.
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Appeal 2014-006154
Application 13/029,333
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).
REQUEST FOR EXPANDED PANEL DENIED
REHEARING DENIED
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