13949413 - (R) (P.T.A.B. Dec. 12, 2019)

Robert A. Vandal et al.

Patent Trials and Appeals BoardDec 12, 2019

13949413 - (R) (P.T.A.B. Dec. 12, 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. 13/949,413 07/24/2013 Robert A. VANDAL JAR-3691-3117 5348 124194 7590 12/12/2019 Guardian Glass, LLC c/o KCPS IP Dept./Shannon Gonsalves 4111 E. 37th Street North Mail Stop T2C Wichita, KS 67220 EXAMINER DODDS, SCOTT ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 12/12/2019 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): koch_pair@firsttofile.com pair_nixon@firsttofile.com ptomail@nixonvan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT A. VANDAL, DUANE O. RECKER, and KEITH ALDRICH ____________ Appeal 2018-002551 Application 13/949,413 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing2 of our Decision3 entered September 16, 2019, affirming the Examiner’s decision rejecting claim 18 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over De Santis (US 3,779,794, issued December 18, 1973), DeAngelis (US 3,781,003, issued December 25, 1973), 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 the Guardian Glass, LLC. Supplemental Appeal Brief (dated November 21, 2017). 2 Appellant’s Request for Rehearing filed November 18, 2019 (“Request” or “Req.”). 3 Decision on Appeal mailed September 16, 2019 (“Decision” or “Dec.”). Appeal 2018-002551 Application 13/949,413 2 Feichtmeier (US 6,350,791 B1, issued February 26, 2002), and Zinser (US 2010/0090086 A1, published April 15, 2010). Req. 1. We reviewed the Examiner’s rejection of independent claim 18 under 35 U.S.C. § 103(a). App. Br. 6; Final Act. 5; Dec. 3–7. Appellant contends that we misapprehended or effectively overlooked the language “immediate green strength” in claim 18 by adopting an implicit claim construction that renders meaningless a required claim limitation and/or relying on facts not relevant to the issues on Appeal. Req. 1. We have reconsidered our Decision of September 16, 2019. We have reviewed the arguments set forth by Appellant in the Request but we deny the requested relief because Appellant has not persuaded us that we misapprehended or overlooked any points of law or fact that would require a different outcome. Therefore, we deny the request to modify our Decision. Our reasoning follows. (1) Construction of “immediate green strength” Appellant contends that the Decision on Appeal treats the word “immediate” in the phrase “immediate green strength” as mere surplusage. Req. 1–2. According to Appellant, the Decision recognizes that the instant specification relates “green strength” to the necessary grip an adhesive would need to exhibit so as to hold an article, such as a bracket, in place on a windshield without the aid of clamps or tape. Req. 2; Dec. 5 (citing Spec. ¶ 7). Appellant asserts that the claim language at issue relates to “immediate green strength” and not any “green strength.” Req. 2. Appellant argues that the word “immediate” is a separate term that modifies “green strength” and cannot be ignored in construing the claim language. Id. Thus, Appellant contends that the Board erred in failing to give meaning to the word Appeal 2018-002551 Application 13/949,413 3 “immediate” in the phrase “immediate green strength.” Id. We are unpersuaded. Our Decision of September 16, 2019 clearly indicates that we gave appropriate weight to the word “immediate” in considering the meaning of the phrase “immediate green strength.” Dec. 5– 6. Specifically, in the absence of an express definition of the disputed phrase, the Decision ascertains the impact of the word “immediate” by referring to portions of the Specification and the prior art to determine the broadest reasonable interpretation of the disputed word and phrase consistent with the Specification. Id. As we state in our Decision, “[the] disclosures [from the Specification and the prior art] support the Examiner’s broadest reasonable interpretation that De Santis’s adhesive having “excellent green tack”4 describes an adhesive that immediately adheres to a surface as required by the claim (emphasis added). Id. at 6. Therefore, contrary to Appellant’s contention, we gave appropriate weight to the word “immediate” in ascertaining the meaning of the phrase “immediate green strength.” (2) Reliance on facts unrelated to “immediate green strength” Appellant contends that the Decision on Appeal relies on facts unrelated to immediate green strength as it pertains to fully locating the bracket and other items. Req. 2. Appellant contends that there is no evidence for the Board’s conclusion that De Santis’s adhesive having 4 We recognize that De Santis uses this term when referring to the primer (col. 6, ll. 47–48). We find, however, that the term is equally applicable to the polyurethane adhesive in view of De Santis’s broader disclosure (see col. 4, ll. 52–65). Appeal 2018-002551 Application 13/949,413 4 “excellent green tack” describes an adhesive that immediately adheres to a surface as required by the claim. Req. 2; Dec. 6. Appellant asserts that the Board’s conclusion also reads out the word “immediate” required by the disputed claim term. Req. 2. We find these arguments also unavailing. We refer to our discussion above with respect to the consideration of the prior art in interpreting the word “immediate” in the phrase “immediate green strength.” While Appellant asserts that “the fact that De Santis states that its adhesives can be modified ‘to ensure that they have a viscosity precluding sag or flow under the influence of gravity after application to a vertical surface’ is not directly related to, or probative of, whether there is immediate green strength sufficient to fully locate the bracket” (Req. 3), Appellant does not explain adequately why this is so. Moreover, Appellant’s assertion contradicts a later assertion recognizing that “one skilled in the art might infer from these assertions that De Santis’ adhesive itself ‘sticks’ to the surface to which it is applied with minimal sag or flow.” Id. at 4. Thus, Appellant has not explained adequately why one skilled in the art would not have inferred that De Santis’s adhesive would have immediate grip or green strength when applied to surfaces to fully locate items on a windshield. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Therefore, Appellant has not established that our Decision misapprehended or overlooked any particular point of law or fact that would require a different outcome. The factual findings relied upon by the Examiner are amply supported by the record and are sufficient to establish a Appeal 2018-002551 Application 13/949,413 5 prima facie case of obviousness for the subject matter of claim 18. Final Act. 5–8; Ans. 5–11; Dec. 3–7. CONCLUSION In summary: Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 18 103(a) De Santis, DeAngelis, Feichtmeier, Zinser 18 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 103(a) De Santis, DeAngelis, Feichtmeier, Zinser 18 This Decision on the Request for Rehearing incorporates our Decision, mailed September 16, 2019, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED