Phillips, Heather

Patent Trials and Appeals Board

Jun 23, 2020

12666262 - (R) (P.T.A.B. Jun. 23, 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.
12/666,262 12/22/2009 Heather Phillips 25277.26 7963
122269 7590 06/23/2020
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
btucker@kmclaw.com
ipdocket@kmclaw.com
klyon@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATHER PHILLIPS
Appeal 2019-003639
Application 12/666,262
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, 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, dated
April 28, 2020, of our Decision mailed April 22, 2020 (hereinafter
“Decision”). In the Decision, we reversed the Examiner’s rejection under 35
U.S.C. § 112, as well as, the Rohrig grounds (see “REJECTIONS” below)
under 35 U.S.C. § 103(a). Decision 9. Appellant seeks rehearing as to the

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Live-Right, LLC.
Appeal Br. 4.
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portion of our Decision affirming the rejections of claims 19–21 and 23–38
under 35 U.S.C. § 103(a) based on the Kayser grounds (see “REJECTIONS”
below). Req. Reh’g 1.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Amodeo
Halm
Rohrig ’583
Stvartak
US 3,120,670
US 5,813,079
US 6,546,583 B1
US 6,601,272 B2
Feb. 11, 1964
Sept. 29, 1998
Apr. 15, 2003
Aug. 5, 2003
Rohrig
Davis
Kemp
Kayser
Foster
Wong
Hohlbein
US 2003/0014825 A1
US 2003/0046780 A1
US 2004/0187889 A1
US 2006/0037160 A1
US 2007/0006411 A1
US 2007/0163064 A1
US 2009/0178219 A1
Jan. 23, 2003
Mar. 13, 2003
Sept. 30, 2004
Feb. 23, 2006
Jan. 11, 2007
July 19, 2007
July 16, 2009
Schneider
Moskovich
US D358,938
US D514,321
June 6, 1995
Feb. 7, 2006
REJECTIONS
Claims 19–21, 25, and 37 were rejected under 35 U.S.C. § 112,
Second Paragraph as being indefinite.
Claims 19–21 and 23–38 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over the following references:
I. Rohrig Grounds
a) Claims 19–21, 23–26, 31, 33, 34, 37, and 38 –
Rohrig, Halm, Kayser, Davis, and Foster.
b) Claims 27 and 28 – Rohrig, Halm, Kayser, Davis,
Foster, and Moskovich.
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c) Claims 29 and 30 – Rohrig, Halm, Kayser, Davis,
Foster, Moskovich, Stvartak, and Schneider.
d) Claims 31 and 32 – Rohrig, Halm, Kayser, Davis,
Foster, and Rohrig ’583.
e) Claim 35 – Rohrig, Halm, Kayser, Davis, Foster,
Hohlbein, and Kemp.
f) Claim 36 – Rohrig, Halm, Kayser, Davis, Foster,
Wong, and Amodeo.
II. Kayser Grounds
a) Claims 19–21, 23,2 24, 31, 33, 34, and 37 – Kayser,
Davis, and Foster.
b) Claims 25, 26, and 38 – Kayser, Davis, Foster, and
Rohrig.
c) Claims 27 and 28 – Kayser, Davis, Foster, and
Moskovich.
d) Claims 29 and 30 – Kayser, Davis, Foster,
Moskovich, Stvartak, and Schneider.
e) Claims 31 and 32 – Kayser, Davis, Foster, and
Rohrig ’583.
f) Claim 35 – Kayser, Davis, Foster, Hohlbein, and
Kemp.
g) Claim 36 – Kayser, Davis, Foster, Wong, and
Amodeo.

2 Claim 23 is not included in the listing of the rejection, but is addressed in
the body thereof.
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DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03). Appellant presents two different issues that it asserts
the Board overlooked in the Decision and that it asserts are reasons why the
Kayser grounds should be overturned: 1) that “the Office had ‘re-opened
prosecution as a sham’” in response to its previous appeal brief; and 2) that
we did not fully consider its arguments with respect to “objective indicia of
nonobviousness” because, although the only references mentioned in the
objective indicia section of the appeal brief were Rohrig and Halm (Appeal
Br. 42), Appellant intended those arguments to apply to “all prior art
rejections.” Req. Reh’g 3–4. We address each argument in turn.

Re-opening Prosecution
MPEP § 1207.04 provides guidance to examiners as to when they can
reopen prosecution after the filing of an appeal brief. In particular, as was
the case here, “[t]he examiner may . . . reopen prosecution to enter a new
ground of rejection in response to appellant’s brief.” Id. In this case, after
the Examiner reopened prosecution, the Kayser grounds were added as new
grounds of rejection. See generally, 2018-11-09 Non-Final Act.
Appellant argues that re-opening prosecution to enter the Kayser
grounds was a sham because these were “rejections that the Office had
already admitted were overcome.” Req. Reh’g 3; see also id. at 2 (“Office
admits that new claims 19-38 overcome Kayser grounds” “Office also adds
rejections based on Kayser grounds even though the Office admitted on
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5/10/2017 that much broader claims overcame the Kayser
grounds”(emphasis omitted)). This misstates the file history.
In the April 12, 2017 Non-Final Office Action, Kayser was used as a
secondary reference in rejecting the claims. 2017-04-12 Non-Final Action
2–7. In the Examiner’s Interview Summary of May 10, 2017, “the examiner
did agree that the . . . proposed amendment would overcome the prior
rejection.” However, copies of the proposed amendments were not included
(thus we do not know how they compare to the current claims) and there is
no discussion of Kayser.
The current Kayser grounds (2018-11-09 Non-Final Act.) are
completely different from the grounds that included Kayser in the April 12,
2017 Non-Final Office Action. Kayser is now used as a primary reference
in combination with a different set of other references. Thus, Appellant’s
assertion that “the Office Action still presents the same rejections that have
been at issue for years” lacks support. Req. Reh’g 3 (citing Appeal Br. 4).3
Our review of the file history does not reveal that the Kayser grounds, as
included in the outstanding 2018-11-09 Non-Final Office Action, were
added as anything other than as a response to Appellant’s arguments in the
previous appeal brief.
Appellant also states that we did not address their argument “that ‘the
Office [i.e. the Examiner] continues to present baseless rejections without
rebutting any of Applicant’s arguments.’” Req. Reh’g 3 (citing Appeal
Brief 5). Of course this argument is not relevant to new grounds, such as the
Kayser grounds, because Appellant would not have had an opportunity to

3 We note that the rejections included in the 2017-4-12 Non-Final Action
largely repeat the rejections affirmed in a previous Decision (not at issue
here) issued January 10, 2017.
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address these grounds. Further, as a general proposition it is also false. The
outstanding 2018-11-09 Non-Final Office Action includes a section entitled
“Response to Arguments” that includes six pages addressing Appellant’s
arguments. Though we ultimately did not agree with the Examiner as to
some points (see Decision 5–7), that does not mean that the Examiner’s
positions were baseless or unreasonable. We render decisions as to whether
the Office, by way of the examiner, satisfied its burden of demonstrating
unpatentability on the totality of the record. In re Oetiker, 977 F. 2d 1443,
1445 (Fed. Cir. 1992) (citations omitted). In making this determination we
take into account, among other things, the analysis and response to
appellant’s arguments provided by the examiner. Id. A preponderance of
evidence, coupled with correct reasoning and legal conclusions, may be
sufficiently dispositive to establish unpatentability based on the totality of
the record even where the examiner does not respond to a specific argument.
This is particularly true where arguments pertain to matters outside the scope
of our jurisdiction or are not pertinent to the rejection for which appellants
seek our review. See 37 C.F.R. § 41.37(c)(1)(iv)(“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant”).
We recognize that the Examiner re-opened prosecution in response to
Appellant’s previous appeal brief. For the reasons discussed above this does
not appear to have been done as a “sham” as asserted by Appellant.
Regardless, Appellant is ultimately without remedy for this action before
this board. In re Voss, 557 F.2d 812, 815–816, n.6 (CCPA 1977) (“It does
not appear from the record that appellant ever petitioned the [Director] with
respect to the decision to reopen prosecution.”; “The examiner's decision to
reopen prosecution constituted neither the rejection of a claim nor a decision
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adverse to the ultimate patentability of a claim. Accordingly, we hold that
the board properly found that it had no jurisdiction to review the decision to
reopen prosecution.”)

Objective evidence
In our Decision, we determined that Appellant’s Appeal Brief did not
address the Kayser grounds. See Decision 7. Upon a second review, we
confirm that Appellant’s Appeal Brief does not address, or even
acknowledge the Kayser grounds. See generally Appeal Brief. Appellant
presents arguments concerning secondary considerations only with respect
to the Rohrig grounds. See id. at 42 (referring back to prior arguments made
with respect to Rohrig and Halm in the Rohrig grounds). Our reproduction
of a portion of the Examiner’s analysis (Decision 8) served only to point out
that the matter was left unaddressed by Appellant’s briefing; it was not
intended to serve as an indication that we reviewed the merits of issues not
raised by Appellant in contravention of 37 C.F.R. § 41.37(c)(1)(iv) which
states:
The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant. Except as provided
for in §§ 41.41, 41.47 and 41.52, any arguments or authorities
not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal. Each ground of
rejection contested by appellant must be argued under a separate
heading, and each heading shall reasonably identify the ground
of rejection being contested (e.g., by claim number, statutory
basis, and applied reference, if any).
Thus, on rehearing and for the first time, “Applicant requests that the
Board determine whether the examiner, in rejecting each of the claims under
the Kayser grounds, properly analyzed whether the weight of the objective
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evidence rebuts his rationales for combining the references to reject every
claim as being obvious or whether the examiner simply ignored the objective
evidence.” Req. Reh’g 11.
We decline Appellant’s request as improper. A request for rehearing
is limited to “points believed to have been misapprehended or overlooked by
the Board” (37 C.F.R. § 41.52(a)(1)), and may not raise new arguments
except as permitted by 37 C.F.R. § 41.52 paragraphs (a)(2) through (a)(4).
We determine that none of the exceptions in 37 C.F.R. § 41.52 (new case
law, new grounds of rejection) apply. We further determine that Appellant’s
Request does not identify any matter overlooked or misapprehended by the
Panel in rendering the original Decision.

CONCLUSION
For the foregoing reasons, we are not informed of any matters
misapprehended or overlooked in our prior Decision and deny Appellant’s
request to make any changes thereto.

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9
DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims 35
U.S.C §
References Denied Granted
19–21, 23, 24,
31, 33, 34, 37
103 Kayser, Davis, Foster 19–21, 23, 24,
31, 33, 34, 37

25, 26, 38 103 Kayser, Davis, Foster,
Rohrig
25, 26, 38
27, 28 103 Kayser, Davis, Foster,
Moskovich
27, 28
29, 30 103 Kayser, Davis, Foster,
Moskovich, Stvartak,
Schneider
29, 30
31, 32 103 Kayser, Davis, Foster,
Rohrig ’583
31, 32
35 103 Kayser, Davis, Foster,
Hohlbein, Kemp
35
36 103 Kayser, Davis, Foster,
Wong, Amodeo
36
Overall
Outcome
19–21, 23–38

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
References/Basis Affirmed Reversed
19–21, 25, 37 112, ¶ 2 Indefiniteness 19–21, 25, 37
19–21, 23–26,
31, 33, 34, 37,
38
103 Rohrig, Halm, Kayser, Davis,
Foster
19–21, 23–
26, 31, 33,
34, 37, 38
27, 28 103 Rohrig, Halm, Kayser, Davis,
Foster, Moskovich
27, 28
29, 30 103 Rohrig, Halm, Kayser, Davis,
Foster, Moskovich, Stvartak,
Schneider
29, 30
31, 32 103 Rohrig, Halm, Kayser, Davis,
Foster, Rohrig ’583
31, 32
35 103 Rohrig, Halm, Kayser, Davis,
Foster, Hohlbein, Kemp
35
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Claims 35
U.S.C. §
References/Basis Affirmed Reversed
36 103 Rohrig, Halm, Kayser, Davis,
Foster, Wong, Amodeo
36
19–21, 23, 24,
31, 33, 34, 37
103 Kayser, Davis, Foster 19–21, 23,
24, 31, 33,
34, 37

25, 26, 38 103 Kayser, Davis, Foster, Rohrig 25, 26, 38
27, 28 103 Kayser, Davis, Foster,
Moskovich
27, 28
29, 30 103 Kayser, Davis, Foster,
Moskovich, Stvartak,
Schneider
29, 30
31, 32 103 Kayser, Davis, Foster, Rohrig
’583
31, 32
35 103 Kayser, Davis, Foster,
Hohlbein, Kemp
35
36 103 Kayser, Davis, Foster, Wong,
Amodeo
36
Overall
Outcome
19–21,
23–38

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