2020001699 (P.T.A.B. Jan. 28, 2021)

Jenny Cheng

Patent Trials and Appeals BoardJan 28, 2021

2020001699 (P.T.A.B. Jan. 28, 2021)

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. 15/054,349 02/26/2016 Jenny Cheng 139650.228 5804 27162 7590 01/28/2021 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER MORRIS, TAYLOR L ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 01/28/2021 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 JENNY CHENG Appeal 2020-001699 Application 15/054,349 Technology Center 3600 Before JOHN C. KERINS, KEVIN F. TURNER, and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant requests reconsideration (hereinafter “Request”) under 37 C.F.R. § 41.52 of our Decision mailed December 8, 2020 (“Decision”), affirming in part, the Examiner’s rejections. In particular, the Decision affirmed the rejections of claims 1–6, 9–12, 15–20,1 but reversed the rejections of claims 7, 8, 13, and 14. We DENY the request to reverse the Examiner’s rejection as to claims 1–6, 9–12, 15, 19, and 20. 1 We note that the Decision Summary’s “Overall Outcome” row inadvertently omits claims 16–18 from the “Affirmed” column. Decision 15. Appeal 2020-001699 Application 15/054,349 2 REHEARING DECISION The Appellant argues that “[t]he Examiner’s finding and agreement of the PTAB that Rozier discloses the invention substantially as claimed is in error” because “the oversize top portion 40 of Rozier is not threaded in the housing 18,” and as such, fails to disclose “an intermediate member having ‘a collar at one end thereof threadably mounted in said tubular housing’ as required by claim 1.” Request 1–2 (emphasis omitted). Similar argument is made with respect to the oversized head portion 42 of Rozier’s threaded shaft 22. Request 2–3. However, these arguments were not previously presented, and thus, are new. A Request for Rehearing must state the points believed to have been misapprehended or overlooked in a Board’s decision. See 37 C.F.R. § 41.52(b)(1). The Board could not have misapprehended or overlooked an argument that was not raised on appeal, and arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in a request for rehearing. See 37 C.F.R. § 41.52(a)(1); see also In re Avid Identification Systems, Inc., 504 Fed. Appx. 885, 891 (Fed. Cir. 2013) (Board properly refused to consider arguments first raised in request for rehearing). In addition, this argument is misdirected because, as noted in the Decision, the Examiner conceded that Rozier does not disclose the recited collars, and relied on Middleton for such collars. Decision 3, citing Final Act. 7–8; Middleton Fig. 7. The Appellant also argues that “[t]he Examiner’s holding and agreement of the PTAB that Middleton discloses the recited collars is not sufficient alone for a holding of obviousness.” Request 1. Specifically, the Appellant asserts that “[r]eplacing the oversized portions 40 and 42 of Rozier with threaded collars as in Middleton . . . would simply result in Appeal 2020-001699 Application 15/054,349 3 substantially the same structure . . . [because] the threaded collars would not be threaded into the housing 18 or in the intermediate member 20.” According to the Appellant, such modification of “the internal and external threaded structures” of Rozier would “destroy the teachings of Rozier” and change its principle of operation. Request 3. The Appellant further asserts that there is no motivation to one of ordinary skill to modify Rozier in the manner suggested. Request 3, 5. Again, these arguments based on modification of Rozier to have collars as suggested by Middleton are new and untimely. In addition, the argument is unpersuasive because it is premised on bodily incorporation of the collars of Middleton rather than considering Middleton for all that it teaches. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect. On the issue of obviousness, the combined teachings of the prior art as a whole must be considered.”). Moreover, the Appellant does not explain how such modification would “destroy the teachings of Rozier” and change its principle of operation. Furthermore, contrary to the Appellant’s assertion as to lack of motivation, the Examiner concluded that such modification would have been obvious to one of ordinary skill in the art “in order to provide an alternate known integral means of limiting telescoping travel between three telescoping shaft elements (Rozier: Col. 3, Ln. 46-50; Middleton: Col. 2, Ln. 46-51; Col. 3, Ln. 10-13), thereby removing the need to deform components of the leg to achieve a similar result (Rozier: Col. 3, Ln. 21-44).” Final Act. 7–8. The Appellant further argues that the Examiner’s reliance on Hogan or Raftery “for disclosing an externally threaded rod mounted in and Appeal 2020-001699 Application 15/054,349 4 projecting from a tubular housing is not sufficient alone for a holding of obviousness” because such modification would be contrary to Rozier’s teaching of providing “a leveler for a desk without an upwardly extending shaft.” Request 2, 6 (citing Rozier, col. 1, ll. 8–44). This argument is also new and untimely. Nonetheless, the argument is unpersuasive because the cited portion of Rozier pertains to a conventional unitary threaded shaft that is long enough to provide adequate adjustment range, and does not address mounting of a telescoping leveler guide, which is disclosed by Rozier as a solution to the problem caused by the length of a conventional threaded shaft. See Rozier, col. 1, l. 63–col. 2, l. 3. In addition, as the Examiner already explained, “the proposed modification would not require the connection between the leveler and column to be external,” and “Rozier teaches a means of increasing the extension range of the structure via additional members.” Ans. 6; Decision 5–6. The Appellant finally argues that “[n]o reasoning is given for upholding a rejection of method claims 16-18.” Request 2. The Appellant complains that “[o]ther than a mere conclusory statement, the Decision does not provide any articulated reasoning with some rational underpinning to support the legal conclusion of obviousness of claim 16 from the teachings of Rozier, Middleton, Raftery and Ozawa.” Request 7. However, the Board reviews Examiner’s rejection for error, based on arguments set forth by the Appellant. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”); Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010, precedential) (“The panel then reviews the obviousness rejection for error based upon the issues identified Appeal 2020-001699 Application 15/054,349 5 by appellant, and in light of the arguments and evidence produced thereon.”). In its Appeal Brief, the Appellant argued that because Raftery “does not disclose a method of assembling an adjustable leg,” it is “non-analogous to Rozier,” and further argued that Raftery discloses a bolt instead of a rod. Appeal Br. 15–16. Both of these arguments were addressed in the Decision. Decision 14 (“This argument is unpersuasive, and we agree with the Examiner that ‘[b]oth Raftery and Rozier are in the field of adjustable leg connections for furniture and appliances,’ and that ‘these references are analogous to both each other and the pending invention.’ Ans. 11. We do not find that the art pertaining to height adjusting devices is separate and distinct from the art of assembling such devices.”); Decision 14–15 (as to the argument that Raftery discloses a bolt and not a rod, this argument is “unpersuasive for the reasons already addressed above relative to Rejection 2.”). Therefore, in view of the above, although we have considered the Decision in light of the Request, we decline to modify the Decision in any respect. DECISION SUMMARY Outcome of Decision after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–5, 7–11 103 Rozier, Middleton, Hogan 1–5, 9–11 1–4, 6–15, 19, 20 103 Rozier, Middleton, Raftery 1–4, 6, 9– 12, 15, 19, 20 16–18 103 Rozier, Middleton, Raftery, Ozawa 16–18 Appeal 2020-001699 Application 15/054,349 6 Overall Outcome 1–6, 9–12, 15–20 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–11 103 Rozier, Middleton, Hogan 1–5, 9–11 7, 8 1–4, 6–15, 19, 20 103 Rozier, Middleton, Raftery 1–4, 6, 9– 12, 15, 19, 20 7, 8, 13, 14 16–18 103 Rozier, Middleton, Raftery, Ozawa 16–18 Overall Outcome 1–6, 9–12, 15–20 7, 8, 13, 14 DENIED