Ex Parte Yoshimoto et al

Patent Trial and Appeal Board

Dec 12, 2013

11343044 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHINTAROU YOSHIMOTO and MASAHIKO KONNO
____________________

Appeal 2011-011753
Application 11/343,044
Technology Center 3600
____________________

Before: JOHN C. KERINS, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-011753
Application 11/343,044

2
Appellants have filed a Request for Rehearing (“Request”) under
37 C.F.R. § 41.52. The Request seeks reconsideration of our Decision on
Appeal mailed September 19, 2013 (“Decision”) affirming the rejection of
claims 1-4, 7-11, and 14-16 under 35 U.S.C. § 103(a) as being unpatentable over
Konno ’237 (US 2003/0139237 A1; pub. Jul. 24, 2003), Ballhause (DE 4310306
A1; pub. Oct. 6, 1994), and Konno ’762 (US 2004/0058762 A1; pub. Mar. 25,
2004). We have jurisdiction under 35 U.S.C. § 6(b).
As noted in the Decision, Appellants argued claims 1-4, 7-11, and 14-
16 as a group and claim 1 was selected as representative. See Decision 3 and App.
Br. 17-19. Appellants maintain that the Patent Trial and Appeal Board erred in
sustaining the Examiner’s decision to reject claims 1-4, 7-11, and 14-16 because
the Examiner has not established a prima facie case of obviousness. Request 1-3.
Specifically, Appellants again contend that a prima facie case of obviousness has
not been established because the references do not provide the motivation for the
modifications proposed by the Examiner and generally allege that the rejection,
therefore, must be based on impermissible hindsight. Request 2-3.
As noted on page 4 of the Decision, this argument is unpersuasive
because there is no requirement that the prior art references themselves
provide a reason for the proposed modifications. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.”). Appellants’ general allegation
of hindsight also fails to apprise us of error.

Appeal 2011-011753
Application 11/343,044

3
DECISION
We have carefully considered the arguments presented in Appellants’
Request for Rehearing and we are not persuaded that we misapprehended or
overlooked any arguments raised by Appellants in the Appeal Brief.
Accordingly, the Request 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)(1)(iv) .

REQUEST DENIED

llw