2020004044 (P.T.A.B. Jun. 2, 2021)

Kenneth Fullick

Patent Trials and Appeals BoardJun 2, 2021

2020004044 (P.T.A.B. Jun. 2, 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. 15/147,675 05/05/2016 Kenneth Fullick HILP0060 (HIL-151610) 3179 162815 7590 06/02/2021 Loppnow & Chapa P.O. Box 7588 Libertyville, IL 60048 EXAMINER HIJAZ, OMAR F ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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@loppchap.com lchapa@loppchap.com mloppnow@loppchap.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH FULLICK Appeal 2020-004044 Application 15/147,675 Technology Center 3600 Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and WILLIAM A. CAPP, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is a response to Appellant’s Request for Rehearing (“Request” or “Req.”) of the Board’s Decision of February 18, 2021 (“Decision” or “Dec.”). Appellant requests rehearing of our affirmance of the Examiner’s rejection of claims 1–6 and 10 under 35 U.S.C. § 102 as anticipated by Scharff, and the consequent rehearing of our affirmance of the Examiner’s rejection of claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over Scharff and Simko. Req. 1. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original Appeal 2020-004044 Application 15/147,675 2 decision. See 37 C.F.R. § 41.52. For the reasons discussed below, we deny the Request. OPINION Appellant’s request for reconsideration of our affirmance of the Examiner’s rejection of claim 11 as anticipated by Scharff is ultimately based on the assertion that Scharff’s muntin clip does not possess the claimed “protruding elements.” For example, Appellant asserts that our conclusion that Scharff’s muntin clips have the “same structural elements” as those recited in claim 1 “represent[s] an aspect of the present decision that is believed to have been misapprehended and/or overlooked,” and then suggests that Scharff’s resilient fingers—the structure that the Examiner found corresponds to the claimed protruding elements (Dec. 5)—are “branches” and not “protruding elements.” Req. 2–3; see also id. at 4 (asserting that “Scharff . . . does not have any equivalent structure to the protruding element, and instead is more closely akin to the branch like element than to the protruding element.”). As we noted in the Decision, however, Appellant did not raise this argument in the Appeal Brief before the Board. Dec. 8 n.5. Appellant instead raised it for the first time in the Reply Brief without showing good cause for the delay, and therefore we declined to consider it, citing 37 C.F.R. § 41.41(b)(2). Id. Appellant does not now dispute that it did not argue in the Appeal Brief that Scharff’s muntin clip lacks protruding elements. Instead, Appellant now suggests that it had good cause for the delay because, 1 The Request does not challenge our decision to treat claim 1 as representative under 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004044 Application 15/147,675 3 apparently, the Examiner opened the door to the argument by asserting in the Answer that “the protruding element had nothing to do with claim 1.” Req. 3. There are at least three problems with this argument. First, this is a post hoc justification for the delay that was not first made in the Reply Brief. Appellant did not attempt to show good cause for the delay, or even acknowledge that there was any delay, in the Reply Brief. Second, it is based on a mischaracterization of the Examiner’s Answer. The Examiner did not assert in the Answer that “the protruding element had nothing to do with claim 1.” As even Appellant acknowledged in the Reply Brief, the Examiner identified Scharff’s “resilient fingers 16” as corresponding to the protruding elements of claim 1. Reply Br. 4–5. The excerpt of the Answer on which Appellant relies (Ans. 5:13–14; see Req. 3) makes an entirely different point. The Examiner was responding to Appellant’s discussion in the Appeal Brief of the structural characteristics of specific embodiments of protruding elements. Ans. 5. The Examiner’s point was that claim 1 does not recite the specific structure of these embodiments, which structure was instead recited in dependent claims 7 and 8. Id. Third, even if the Examiner did assert in the Answer that claim 1 does not recite protruding elements, Appellant does not explain how a statement made in the Answer somehow justifies not arguing in the Appeal Brief that Scharff’s muntin clip lacks protruding elements. Appellant appealed the Examiner’s August 19, 2019 Final Action,2 and Appellant does not allege that the Examiner disregarded the protruding elements in this office action. 2 See Notice of Appeal 1 (Nov. 19, 2019). Appeal 2020-004044 Application 15/147,675 4 In sum, Appellant’s Request for Rehearing is based on an argument not first raised in the Appeal Brief. An argument not raised in the Appeal Brief (or in the Reply Brief with a showing of good cause for the delay) is not permitted in a request for rehearing. 37 C.F.R. § 41.52(a)(1). For that reason, Appellant’s request is denied. CONCLUSION We deny Appellant’s request for rehearing. OUTCOME OF DECISION ON REHEARING Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–6, 10 102 Scharff 1–6, 10 7, 8 103 Scharff, Simko 7, 8 Overall Outcome 1–8, 10 FINAL OUTCOME OF APPEAL AFTER REHEARING: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10 112, second paragraph Indefiniteness 1–8, 10 1–6, 10 102 Scharff 1–6, 10 7, 8 103 Scharff, Simko 7, 8 Overall Outcome 1–8, 10 Appeal 2020-004044 Application 15/147,675 5 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