Simmonds Precision Products, Inc.

Patent Trials and Appeals Board

Nov 3, 2021

2020004405 (P.T.A.B. Nov. 3, 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.
15/603,126 05/23/2017 Tyler Arsenault 97651US01-U100-012873 1853
113529 7590 11/03/2021
Kinney & Lange, P.A.
312 South Third Street
Minneapolis, MN 55415
EXAMINER
LEE, HWA S
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
11/03/2021 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):
USPatDocket@kinney.com
amkoenck@kinney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TYLER ARSENAULT, PETER J. CARINI, and
DAVID H. CROWNE1
____________

Appeal 2020-004405
Application 15/603,126
Technology Center 2800
____________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant filed a Request for Rehearing (“Request” or “Req.”)
under 37 C.F.R. § 41.52 seeking reconsideration of a portion of our Decision
dated August 9, 2021 (“Decision” or “Dec.”). We GRANT the Request.
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Simmonds Precision Products, Inc. Appeal Br. 2.
Appeal 2020-004405
Application 15/603,126

2
37 C.F.R. § 41.52(a). In its Request, the Appellant observes that the
Decision purports to affirm an indefiniteness rejection of claims 1–20 on the
basis of the term “processor,” even though claims 1–20 were never rejected
by the Examiner as indefinite on the basis of the term “processor.” Req. 1–
2.
The Appellant is correct. Although both the Appeal Brief and the
Examiner’s Answer mistakenly indicate that claim 1 was rejected as
indefinite on the basis of the term “processor,”2 a close review of the Final
Action and the Answer establishes that an indefiniteness rejection was not
made by the Examiner on the basis of the term “processor.” See, e.g., Final
Act. 2–4. Rather, the Examiner determined that several terms, including
“processor,” “filter,” “sensor,” “transducer,” and “optical transmitter,”
invoke 35 U.S.C. § 112(f), but the Examiner entered indefiniteness
rejections only on the basis of the terms “filter” and “optical transmitter.”
Id. at 3–4.
In our Decision, we misapprehended or overlooked the fact that the
Examiner did not enter an indefiniteness rejection on the basis of the term
“processor.” The Appellant has identified that error. Req. 1–2.
Accordingly, the Rehearing Request is granted.
Additionally, we note that our erroneous affirmance of a rejection that
we now understand that the Examiner did not make was largely based on the

2 See Appeal Br. 9 (“Because the specification discloses sufficient structure
to perform the recited functions of each of the claim limitations recited in
claim 1 – ‘optical filter’ and ‘processor,’ these limitations are not indefinite
means-plus-function limitations.”); Ans. 7 (repeating the Appellant’s
statement indicating that the term “processor” was the basis for an
indefiniteness rejection).
Appeal 2020-004405
Application 15/603,126

3
Appellant’s failure to distinguish relevant case law related to means-plus-
function claiming. See Dec. 5–6. As is now apparent, the Appellant had no
obligation to address that case law in view of the fact that no indefiniteness
rejection was pending. In view of that, we decline to enter a new ground of
rejection on the basis of the term “processor.”
CONCLUSION
The Decision has been reconsidered, and, for the reasons set forth
above, the Request is GRANTED.
Outcome of Decision on Rehearing:
Claims
Rejected
35
U.S.C. § Basis Denied Granted
1–20 112(b) Indefiniteness 1–20

Final Outcome of Appeal after Rehearing:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
11, 12 112(a) Enablement 11, 12
11, 12 112(a) Written Description 11, 12
2–20 112(b) Indefiniteness 2–20
Overall
Outcome 2–20 1
GRANTED