2019005840 (P.T.A.B. Dec. 8, 2020)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardDec 8, 2020

2019005840 (P.T.A.B. Dec. 8, 2020)

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. 15/137,182 04/25/2016 Prasad Dev Hanumalagutti 83633848 1084 28395 7590 12/08/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER TRUONG, THOMAS ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 12/08/2020 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PRASAD DEV HANUMALAGUTTI, MICHAEL W. DEGNER and FRANCO LEONARDI ____________ Appeal 2019-005840 Application 15/137,182 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is in response to a Request for Rehearing (“Req. Reh’g”), filed November 24, 2020, of our Decision, mailed September 24, 2020 (“Decision”), wherein we affirmed the Examiner’s 35 U.S.C. §§ 102 and 103 rejections of all appealed claims. The Request for Rehearing de facto appears to limit its argument to the rejection of independent claims 7 and 13, as no argument was made that is applicable with respect to the rejection of independent claim 1. We have reconsidered our Decision, in light of Appellant’s comments in the Request for Rehearing, and we find no error in the disposition of the §§ 102 and 103 rejections. Appeal 2019-005840 Application 15/137,182 2 Appellant states that the “Board clearly misinterprets the law, specification, and prosecution history” and urges that an end face/the end face is singular (Req. Reh’g 2). Appellant contends that “[t]he specification is further careful to distinguish” between referring to both end faces as opposed to a singular end face (Req. Reh’g 3). Appellant urges that “[t]o the extent the Board does not find the specification sufficiently clear” (Req. Reh’g 4–5),1 this issue has been explained “on five separate occasions during prosecution” (Req. Reh’g 5). These arguments are not persuasive of any error in our Decision. Appellant’s argument merely reargues the same points we have already addressed in our Decision (See, e.g., Decision 5, 6). While a prosecution history might limit patent claims to the construction argued by Appellant, these claims have not been patented. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.”). Likewise, in prosecution before the PTO “[i]t is the applicants’ burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the public with adequate notice of 1 To the extent that much of the more detailed explanation of the Specification is newly presented in this request for rehearing, we need not consider these new arguments. New arguments or evidence not previously relied on are not permitted in a request for rehearing except under the following circumstances: (1) to address a recent relevant decision of the Board or a Federal Court (see Board Rule 52(a)(2)); (2) to address a new ground of rejection designated as such in the Board’s decision (see Board Rule 52(a)(3)); or (3) to argue that the Board’s decision contains an undesignated new ground of rejection (see Board Rule 52(a)(4)). Appeal 2019-005840 Application 15/137,182 3 the boundaries of protection involved. The time to do so is during prosecution where an applicant has the ability to amend the claims to more precisely define the metes and bounds of the claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12 (BPAI 2008).2 Accordingly, no persuasive merit is present in Appellant’s arguments made in the Request for Rehearing. Thus, we decline to modify our decision to affirm the Examiner’s 35 U.S.C. §§ 102 and 103 rejections of the appealed claims. DECISION In conclusion, Appellant’s Request is denied with respect to making changes to the final disposition of the rejections. This Decision on the Request for Rehearing incorporates our Decision, mailed September 24, 2020, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). 2 Notably, Appellant untimely attempted to amend the claims 7 and 13 (in an amendment filed October 2, 2018) to recite, e.g., “the same end face”; however, that amendment was not entered by the Examiner (Advisory Act. mailed October 19, 2018; see also, e.g., Ans. 4). Appeal 2019-005840 Application 15/137,182 4 Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–9, 12–16, 18 102 Adaniya 7–9, 12–16, 18 1–4, 11, 17 103 Adaniya, Takahashi 1–4, 11, 17 10 103 Adaniya, Matsui 10 Overall Outcome 1–4, 7–18 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–9, 12–16, 18 102 Adaniya 7–9, 12–16, 18 1–4, 11, 17 103 Adaniya, Takahashi 1–4, 11, 17 10 103 Adaniya, Matsui 10 Overall Outcome 1–4, 7–18 REHEARING DENIED