15015746 - (R) (P.T.A.B. Oct. 2, 2020)

Graham, Michael

Patent Trials and Appeals BoardOct 2, 2020

15015746 - (R) (P.T.A.B. Oct. 2, 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. 15/015,746 02/04/2016 Michael Graham 209.042 6526 30236 7590 10/02/2020 Houtteman Law LLC PO Box 370 Merrifield, VA 22116-0370 EXAMINER PRONE, CHRISTOPHER D ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 10/02/2020 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): USPTO@dockettrak.com ibgamboa@houtteman.com wangxuzhuo@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL GRAHAM ____________________ Appeal 2019-005329 Application 15/015,746 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE Pursuant to 37 C.F.R. § 41.52, Appellant filed a Request for Rehearing on July 28, 2020 (“Req. Reh’g”) seeking reconsideration of our Decision on Appeal mailed May 28, 2020 (“Dec.”). We have jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b). Except for any portion specifically withdrawn on rehearing, this Decision on Rehearing incorporates the Decision on Appeal, including any abbreviations defined therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). Appeal 2019-005329 Application 15/015,746 2 ANALYSIS Pursuant to 37 C.F.R. § 41.52(a)(4), Appellant argues that the Decision on Appeal includes undesignated new grounds of rejection, and requests: (1) the Board remand the case to the Examiner to give Appellant a chance to narrow the claims; and (2) the Board inform the Examiner whether the claims, as narrowed, would be allowable. Req. Reh’g 1–2. According to Appellant, the Examiner construes the “plurality of grooves” recited in independent claim 1 as “continuous grooves that travel, uninterrupted, around the circumference of the cylindrical side surface,” whereas the Board more broadly construed the claim term to encompass discontinuous grooves. Id. at 2–3 (citing Dec. 7–8). We appreciate that Appellant may have had several interactions with the Examiner on which Appellant’s understanding of the Examiner’s claim construction is based. See Req. Reh’g 2 (“The Examiner construed ‘plurality of grooves’ to be continuous grooves that travel, uninterrupted, around the circumference of the cylindrical side surface. Appellant, who has had several interactions with Examiner Prone during this prosecution, is sure of this.”). The record before us on appeal, however, does not support Appellant’s understanding. To the contrary, the record suggests that the Examiner construed the recited “plurality of grooves” to include discontinuous grooves, as the Examiner relies upon Zang’s tines 46A–46F, which do not extend continuously around the circumference of shaft portion 44, to teach the recited “plurality of grooves.” Final Act. 5; Ans. 6–7. Thus, the Board did not provide a new construction of the claim term “plurality of grooves,” but instead made explicit that which is implicit in the Examiner’s rejection. Appeal 2019-005329 Application 15/015,746 3 As our construction of the recited “plurality of grooves” does not differ from that of the Examiner, Appellant has not persuaded us that our affirmance constitutes new grounds of rejection. We, therefore, deny Appellant’s request to modify the outcome of the Decision on Appeal to remand the case to the Examiner. Furthermore, given that the claims do not require continuous grooves, we also deny Appellant’s request for an indication of allowability of claims that are not currently being considered by the Examiner and before us on appeal. CONCLUSION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § References/Basis Denied Granted 1–3, 9–13 103 Graham, Zang 1–3, 9–13 4 103 Graham, Zang, Rappaport 4 6, 8 103 Graham, Zang, Zang ʼ165 6, 8 7 103 Graham, Zang, Zang ʼ165, Rappaport 7 Overall Outcome 1–13 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–3, 9–13 103 Graham, Zang 1–3, 9–13 4 103 Graham, Zang, Rappaport 4 6, 8 103 Graham, Zang, Zang ʼ165 6, 8 Appeal 2019-005329 Application 15/015,746 4 7 103 Graham, Zang, Zang ʼ165, Rappaport 7 Overall Outcome 1–13 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED