Peter Troesch

Patent Trials and Appeals Board

Nov 10, 2020

13918641 - (R) (P.T.A.B. Nov. 10, 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.
13/918,641 06/14/2013 Peter Troesch P614 4175
23586 7590 11/10/2020
ROBERT E MALM
16624 PEQUENO PLACE
PACIFIC PALISADES, CA 90272
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
11/10/2020 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 PETER TROESCH
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Appeal 2019-006483
Application 13/918,641
Technology Center 3700
____________

Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52
(hereinafter “Request” or “Req. Reh’g”), dated September 18, 2020, of our
Decision on Appeal (hereinafter “Decision” or “Dec.”) dated August 18,
2020. In the Decision, we affirmed the Examiner’s decision to reject:
(i) claims 1–4 under 35 U.S.C. § 112(b) as indefinite; (ii) claims 1–4 under
35 U.S.C. § 101 as being directed to or encompassing a human organism;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Avid Identification
Systems Inc. Appeal Br. 4.
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and (iii) claims 1–4 under 35 U.S.C. § 102(a)(1) as anticipated by, or in the
alternative under 35 U.S.C. § 103 as obvious over, Schmidt (US 6,569,077
B2; issued May 27, 2003). Dec. 13.2 Rehearing is limited to matters
overlooked or misapprehended by the Board in rendering the initial decision.
OPINION
With respect to the rejection of claims 1–4 under 35 U.S.C. § 112(b)
as indefinite, Appellant states in the Request that “[t]he Board should note
that the Examiner had withdrawn the 35 USC Section 112 rejection prior to
appeal.” Req. Reh’g 1. Our Decision acknowledged the withdrawal of the
rejection of claims 1–4 under 35 U.S.C. § 112(b) as being incomplete for
omitting essential structural cooperative relationships. Dec. 2 n.2 (citing
Non-Final Act. (July 6, 2018), 2). Although the Examiner withdrew the
rejection of claims 1–4 under 35 U.S.C. § 112(b) on this particular basis that
was set forth on pages 3–4 of the Non-Final Office Action mailed November
9, 2015 (Non-Final Act. (July 6, 2018), 2), the Examiner set forth several
other bases for the rejection of claims 1–4 under 35 U.S.C. § 112(b) as being
indefinite in the Non-Final Action mailed July 6, 2018. Non-Final Act. (July
6, 2018), 6–7 (outlining items (a)(1) querying whether the claimed operator
is intended by Appellant to be equivalent to a person or an object/element;
(a)(2) citing the lack of antecedent basis for “push-bar”; (b) citing the lack of
antecedent basis for the following terms in claim 1: “proximal end” in lines
1–2, “the cutting edge” in line 4, “the distal end” of the cannula in line 4,

2 In the Decision, we also reversed the Examiner’s decision to reject:
(i) claims 1–4 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement; and (ii) claims 1–4 under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative under 35 U.S.C. § 103 as obvious over,
Grimm (US 5,669,890; issued Sept. 23, 1997). Dec. 13.
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“the implantation process” in line 5, “the push-bar” in line 5, “the bevel
region” in line 8, and “the execution of the implantation process in lines 9–
10; (c) citing the insufficient antecedent basis for “the force” in line 2 of
claim 2; and (d) citing the insufficient antecedent basis for “the outer
surface” in lines 2–3 of claim 4).
In this Decision on Request for Rehearing, we clarify that we
(i) summarily sustained the rejection of claims 1–4 under 35 U.S.C. § 112(b)
on all the bases (a)(1), (a)(2), (b), (c), and (d) set forth on pages 6–7 of the
Non-Final Office Action mailed July 6, 2018, except for the purported lack
of antecedent basis for “the proximal end” of the cannula cited in item (b),
which was specifically argued by the Appellant, and (ii) did not consider the
rejection of claims 1–4 under 35 U.S.C. § 112(b) on the basis of being
incomplete for omitting essential structural cooperative relationships of
elements as set forth on pages 3–4 of the Non-Final Office Action mailed
November 9, 2015 because this basis of the rejection had been withdrawn by
the Examiner.
With respect to the rejection of claims 1–4 under 35 U.S.C. § 101,
Appellant argues that a description of how a user would use a device “may
be helpful in understanding how the device works” even if it is “not required
to describe the device.” Req. Reh’g 2. Appellant argues that “[a]n operator
utilizing the implantation device to make an incision in a body [as recited in
a portion of the claim that describes how an operator uses the device] is not a
violation of the America Invents Act.” Id. at 3. Appellant has not pointed
out where any such argument was made previously in the briefing, and we
have not found any such previous argument in our review of the record.
The Board could not have overlooked or misapprehended arguments
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that were not before it. “Arguments not raised, and [e]vidence 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.” 37 C.F.R. § 41.52(a)(1); see also Ex
parte Hindersinn, 17 USPQ 78, 80 (BPAI 1971) (An argument advanced in
a petition for reconsideration but not advanced in the principal brief or the
reply brief was not properly before the Board); cf. Pentax Corp. v. Robison,
135 F.3d 760, 762 (Fed. Cir. 1998) (citing cases supporting the proposition
that issues not raised before the court are not addressed on rehearing).
Appellant has not shown good cause as to why these new arguments
are entitled to consideration under 37 C.F.R. § 41.52(a)(2). Additionally,
37 C.F.R. § 41.52(a)(3)–(4) are directed to new grounds of rejection, and do
not apply. As such, the arguments relating to the rejection of claims 1–4
under 35 U.S.C. § 101 as being directed to or encompassing a human
organism are improper and untimely when made for the first time in a
request for reconsideration. See Hyatt v. Dudas, 551 F.3d 1307, 1313–14
(Fed. Cir. 2008); see also Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.
Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (BPAI 1982),
aff’d, 714 F.2d 160 (Fed. Cir. 1983) (table)) (“A party cannot wait until after
the Board has rendered an adverse decision and then present new arguments
in a request for reconsideration.”).
With respect to the rejection of claims 1–4 under 35 U.S.C.
§ 102(a)(1) as anticipated by, or in the alternative under 35 U.S.C. § 103 as
obvious over, Schmidt, Appellant argues that “Schmidt’s coined-slot type
structural impediment is labeled 24 in Figs. 4 and 6” and it “is NOT in the
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bevel region 15.” Req. Reh’g 4.3 More specifically, Appellant argues that
“[i]n forming the blade-type coined slot structural impediment 24, the blade
separates into two opposed flaps 24a and 24b which become the structural
impediment 24 and which occupy the same position, NOT in the bevel
region.” Id. Appellant presents this argument regarding flaps 24a, 24b, in
particular, for the first time in the Request. The Examiner found that
“Schmidt describes in Fig. 5 that the two flaps 24a, 24b (equivalent to
structural impediment) are folded into lumen 16 when coined slot 24 is
made. These opposed flaps 24a, 24b provide the detent means (structur[al]
impediment)). The flaps 24a, 24b protrude into the lumen 16.” Non-Final
Act. 9. In our Decision, we relied on this finding, specifically, on flaps 24a,
24b being located in bevel region 18 of the cannula of Schmidt. Dec. 10
(citing Schmidt, Fig. 5, 4:37–39; Ans. 16–17). Appellant has not pointed
out where any arguments relating specifically to flaps 24a, 24b were made
previously in the briefing, and we have not found any such previous
arguments in our review of the record. The Board could not have
overlooked or misapprehended arguments, regarding flaps 24a, 24b
specifically, which were not before the Board.
For the above reasons, we are unpersuaded that the Board
misapprehended or overlooked Appellant’s arguments or otherwise erred in
sustaining the rejections of claims 1–4 under 35 U.S.C. §§ 112(b), 101, and
102(a)(1)/103. Accordingly, Appellant’s Request has been granted to the

3 Appellant also argues that “Schmidt’s dimple-type structural impediment is
labeled 22 in Fig. 2” and “it is NOT in the bevel region 15.” Req. Reh’g 4.
Our Decision acknowledged that “[d]imples 22, as illustrated in Figure 4 of
Schmidt, are not located in the claimed ‘bevel region’ when the term ‘bevel
region’ is given its broadest reasonable interpretation.” Dec. 10 n.3.
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extent that we have reconsidered our Decision in light of the arguments in
Appellant’s Request, but is denied with respect to our making any
modification to the Decision.
CONCLUSION
In summary:
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–4 112(b) Indefiniteness 1–4
1–4 101 Patent Eligibility 1–4
1–4 102(a)(1),
103
Schmidt 1–4
Overall
Outcome
1–4

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 112(a) Enablement 1–4
1–4 112(b) Indefiniteness 1–4
1–4 101 Patent Eligibility 1–4
1–4 102(a)(1),
103
Schmidt 1–4
1–4 102(a)(1),
103
Grimm 1–4
Overall
Outcome
1–4

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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