Nelson E. Gencheff

Patent Trials and Appeals Board

Sep 30, 2019

14531482 - (R) (P.T.A.B. Sep. 30, 2019)

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.
14/531,482 11/03/2014 Nelson E. Gencheff GEN10708P00112US 3682
32116 7590 09/30/2019
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NELSON E. GENCHEFF
____________________

Appeal 2017-011544
Application 14/531,482
Technology Center 3700
____________________

Before ERIC B. GRIMES, TAWEN CHANG, and TIMOTHY G. MAJORS,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered March 27, 2019
(“Decision”) that affirmed the Examiner’s rejections of claims 14–19 as
indefinite and claims 14–16 as being in improper dependent form.
Appellant argues that claim 14 “is not per se in improper [dependent]
form by reason of extracting a structure specifically set forth in method
claim 1 and using the form at issue to abbreviate the claim.” (Rehearing
Req. 1.) Appellant argues that claim 14 “is inherently broader than claim 1,”
which “recites the use of components in addition to the guide assembly
structure,” and thus “is on its face not in dependent form.” (Id. at 1–2.)
Appellant argues that “[t]he fact that the structure in claim 1 is usable in a
method parallels functional language and description of environmental
Appeal 2017-011544
Application 14/531,482

2
interaction routinely appearing in straightforward apparatus claims.” (Id. at
2.)
Appellant states that their argument that the improper dependency
rejection would not apply “if claim 14 were rewritten to recite each of the
limitations of claim 1 relating to the apparatus” was “not made to suggest
that the claim could be substantively rewritten and changed in scope to be
definite.” (Id.)
With respect to the indefiniteness rejection, Appellant additionally
argues that
[t]he method of claim 1, as referenced in claim 14, is
significant from the standpoint that the guide assembly
must be extendible into a human body vessel. . . . [T]here
is nothing unclear or indefinite about the structure, which
is supported by the fact that the Examiner was able to
make a prior art rejection. No additional limitations are
brought in by the method steps that would render the scope
of the claim indefinite.
(Id.)
We are not persuaded. Appellant’s arguments were addressed in our
Decision.1 (Dec. 4, 5–7.) They do not “state with particularity the points

1 Our Decision did not explicitly address Appellant’s argument that the
definiteness of the claims is supported by the fact that the Examiner was able
to make a prior art rejection. (Rehearing Req. 2.) Appellant did not make
this argument in the Appeal Brief or the Reply Brief. As noted in 37 C.F.R.
§ 41.52, “[a]rguments not raised, and Evidence not previously relied upon,
pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this
section.” Those exceptions do not apply in this case, so the new argument is
not permitted. In any event, we note that the existence of prior art rejections
does not indicate that the claims are not indefinite, for instance where a
claim is amenable to multiple interpretations but is anticipated or obvious
even under the narrowest interpretation.
Appeal 2017-011544
Application 14/531,482

3
believed to have been misapprehended or overlooked by the Board,” as
required by 37 C.F.R. § 41.52. The essence of Appellant’s arguments is that
Appellant disagrees with our interpretation of the claims and/or 35 U.S.C.
§ 112 and with the conclusions that we reached based on the evidence of
record. That is not a proper basis for a Request for Rehearing. For an
applicant dissatisfied with the outcome of a Board decision, the proper
course of action is to appeal, not to file a Request for Rehearing to re-argue
issues that have already been decided. See 35 U.S.C. §§ 141, 145.
Appellant’s Request for Rehearing does not point to any evidence of
record, or any legal authority, that we overlooked or misunderstood in
reaching the conclusions set forth in the Decision. We therefore decline to
revisit our earlier conclusions or to address the prior art rejections of claims
14–19 and 22 as requested by Appellant.

REHEARING DENIED