UNIVERSITY OF NOTRE DAME

Patent Trials and Appeals Board

Jun 30, 2021

2020005585 (P.T.A.B. Jun. 30, 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.
15/074,339 03/18/2016 Mike W. Bean TAY-030682 US ORD 6439
26294 7590 06/30/2021
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKE W. BEAN

Appeal 2020-005585
Application 15/074,339
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

Opinion for the Board filed by KERINS, Administrative Patent Judge

Opinion Concurring filed by CAPP, Administrative Patent Judge

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
dated April 2, 2021, (“Decision”), in which we affirmed the Examiner’s
rejections of claim 8 under 35 U.S.C. § 112(b), and claims 1–8 under 35
U.S.C. § 103. We have jurisdiction over the Request under 35 U.S.C.
§ 6(b).
The Request is denied.

1 Request for Rehearing filed June 2, 2021 (“Request”).
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DISCUSSION
A request for rehearing must state with particularity the point(s)
believed to have been misapprehended or overlooked. 37 C.F.R.
§ 41.52(a)(1). A Request for Rehearing is not an opportunity to merely
express disagreement with a decision without setting forth points believed to
have been misapprehended or overlooked. Nor is it appropriate, in a
Request for Rehearing, to present arguments traversing any rejection that
were not made previously on appeal.
Appellant’s Request spans 186 pages, whereas the arguments
presented in the Appeal Brief filed March 2, 2020, extend over only 10
pages, with no Reply Brief having been filed. That, in and of itself, speaks
volumes as to Appellant and its new attorney having gone far beyond what is
permitted in a Rehearing Request. The concurring opinion below identifies
several, but not all, examples of the violations present in the Request.
We herein address only the arguments made in the Appeal Brief, and
any particular assertions that the arguments may have been misapprehended
or overlooked. We also address Appellant’s contentions that certain
statements appearing in the Decision constitute new grounds of rejection that
were not so designated in the Decision. We have reviewed and considered,
in its entirety, the Request, and to the extent that any specific argument made
therein is not addressed here, it is because we regard it as new argument not
having been previously made, or as otherwise being outside the scope of
what is allowed in a Request for Rehearing.
Arguments Allegedly Misunderstood or Overlooked
We first address Appellant’s Appeal Brief argument that Birmingham
would require modification of its U-shaped member, namely that slots would
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need to be cut in that member in order to accept a strap as taught by Dittmer
therethrough, and that such modification would weaken the U-shaped
member in an unknown and likely detrimental manner and render the
Birmingham device inoperable for its intended purpose. Appeal Br. 15–16.
The Final Action clearly points out that the argument, also raised during
prosecution prior to the appeal, is one based, incorrectly, on an attempted
bodily incorporation of the teachings of Dittmer into Birmingham, and
asserts that one of ordinary skill in the art would be capable of combining
the teachings of the two references to arrive at a brace with an upper and
lower fastening system, as is acknowledged in the Request. Request 8,
quoting Final Action 4. This inferentially points out that the Examiner does
not propose to bodily incorporate the slots from Dittmer in modifying the
Birmingham device. Upon the argument being repeated in the Appeal Brief,
the Answer also repeats that the argument is incorrectly premised on
modifying Birmingham by bodily incorporating the slots of Dittmer, and
explicitly explains that “Birmingham has not been modified in the rejection
of claim 1 to include slots.” Ans. 16–17.
Appellant argues in the Request that the treatment of this issue in the
Decision amounts to a new ground of rejection. See, e.g., Request 5. More
specifically, Appellant maintains that the Decision presents a modification
of Birmingham that involves an unspecified securement means to attach the
strap (added by modification in view of Dittmer) to its U-shaped member,
and a modification that involves wrapping the strap around the Birmingham
U-shaped member without attaching the strap thereto. Id. The Decision
does no such thing.
The Decision states, in pertinent part identified by Appellant,
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The Examiner responds that the argument is in the nature of
bodily incorporating the teaching of a slotted segment with a
strap extending therethrough, but that “Birmingham has not
been modified in the rejection of claim 1 to include slots.” Ans.
17. We do not see where the Examiner explicitly explains how
the additional strap might be secured to the remainder of the
brace; instead, the Examiner takes the position that “one of
ordinary skill [in the art] would be capable of combining the
teachings of Birmingham and Dittmer to arrive at an operable
brace with a heel enclosure and corresponding lower fastening
system.” Id. We understand this to mean that the person of
ordinary skill using ordinary creativity, would, without using
extraordinary skill, adopt a securement means that would not be
otherwise detrimental to the operation of the Birmingham
brace. We agree, and also note that claim 1 does not require any
specific means of securement to the lateral or medial sidewall,
or any securement at all, for that matter. The strap can simply
be installed by wrapping it around the lateral and medial
sidewall, once positioned, and secured to itself.
Decision 9.
This passage does nothing more than explain why we did not find
Examiner error in view of Appellant’s argument asserting that slots would
have to be cut in the Birmingham U-shaped member––(1) the Examiner did
not propose cutting slots, and (2) that this position is not in error because
claim 1 does not specifically require cutting slots or any particular manner of
securement, or require securement at all. To the extent that the discussion
includes aspects of claim construction, we note that Appellant, even after the
Examiner’s explicit statement that the rejection is not based on cutting slots
in the Birmingham device, did not advance any arguments as to claim
construction in this respect that were misapprehended or overlooked in the
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Decision.2 The last sentence merely provides an example of a structure that
we determined would fall within the scope of claim 1, and is not a
modification proposed as a ground of rejection. We decline Appellant’s
Request to designate this as a new ground of rejection. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (further explanation by Board, including
discussion of claim breadth, for sake of thoroughness, did not change the
rejection).
We note that Appellant, in the Request, raises arguments (see, e.g.,
Request 10, 13) directed to, as we noted in the quoted passage above, the
lack of an explicit explanation of the resultant structure of the modified
Birmingham device, but no such argument was advanced in the Appeal
Brief, and thus, we did not misapprehend or overlook such argument.
Appellant additionally maintains that the Decision misapprehended or
overlooked its argument that the proposed modification adding a lower strap
to Birmingham would result in the sidewalls of the U-shaped member being
moved because the strap would be positioned between the sidewalls and the
strap would pull the brace away from the shoe. See, e.g., Request 31–32.
Appellant maintains that this argument and the argument directed to cutting
slots in the Birmingham U-shaped member were improperly “lumped into
one argument.” Id. at 31.
Appellant’s Appeal Brief argument begins as follows:
Regarding the first embodiment (Fig. 1) of the [Birmingham]
patent, the Examiner’s proposed addition of the strap of the
[Dittmer] patent would appear to instead necessitate pulling the

2 Even were claim 1 interpreted to require securement of the strap in some
manner, Appellant does not contest that claim 1 is limited to having slots cut
in the claimed medial and lateral sidewalls.
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U-shaped member out of the described engagement with the lip
76 in order to accommodate the strap 90 [sic. 60] of the
[Dittmer] patent for passage therethrough. That U-shaped
member would then be urged upward under the force of the
added strap and thus further away from its intended position, as
taught by the [Birmingham] patent.
Appeal Br. 13.
The Appeal Brief additionally states that:
Appellant’s Representative respectfully submits that the
Examiner has given no support at all for her contention that
“the sidewalls of the brace [of the [Birmingham] patent] are still
held against the shoe”. As above, a simple thought experiment
of adding the strap of the [Dittmer] patent to the brace of the
[Birmingham] patent would readily demonstrate to one of
ordinary skill in the art the manner in which the brace would be
pulled away from the shoe by that strap. Despite having seen
remarks similar to the above earlier in this prosecution, the
Examiner has not explained how her proposed combination
would maintain the U-shaped member in the requisite
engagement with the lip of the shoe sole (see, e.g., col. 4, lines
29-51 of the [Birmingham] patent) while interposing the added
strap between the U-shaped member and the lip.
Id. at 14.
The above arguments reference pulling the U-shaped member out of
engagement with a shoe in order that the strap may be passed through the U-
shaped member (“therethrough” in the first quoted passage; “as above” in
the second quoted passage). The Decision addresses this argument, as well
as the argument regarding the cutting of slots in the Birmingham U-shaped
member, as follows:
As best we understand these arguments, Appellant
appears to believe that the Examiner’s proposed combination
requires that the strap run at least partially between the shoe and
the U-shaped member, apparently in reference to Figure 1 of
Dittmer, which shows, at the bottom of the laterally oriented
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segment, the strap briefly passing between the shoe and the
segment in a slot formed at the lower portion of the segment.
Decision 9.
Appellant now maintains that the line of argument directed to the
brace being pulled away from the shoe by the strap is separate and distinct
from the argument directed to cutting slots in the Birmingham brace.
Request 31, 33. Yet, both arguments are premised on the strap being passed
through a slot in the brace, in the manner described in Dittmer, thereby being
interposed between the shoe and the brace along a portion thereof. Thus, the
arguments directed to providing slots in the U-shaped member of
Birmingham and the strap causing the brace to be pulled away from the shoe
are appropriately treated together in the portion of the decision quoted
above. We are not apprised that we misapprehended or overlooked any
argument in this respect.3
Other Alleged New Grounds of Rejection in Decision
Appellant bases the arguments set forth below on Federal Circuit case
law4 it interprets as standing for the proposition that “these new cases
specifically make clear that any new rationale constitutes a new grounds of
rejection,” and that “the mere fact that the same references were used does
not shield the rejection from being a new grounds of rejection.” Request 15.

3 Appellant, in the Request, devotes numerous pages and provides one or
more sketches in attempting to show how a brace would be pulled away
from a shoe even were Birmingham not modified to have slots through
which the strap would pass. See, e.g., Request 102–105. None of that was
presented in the Appeal Brief, and thus was not misapprehended or
overlooked in the Decision.
4 In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011); In re Imes, 778 F.3d 1250
(Fed. Cir. 2015).
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We agree that case law precedent supports the latter assertion, but disagree
that Leithem or Imes compels a determination that a new ground of rejection
is made any time a Board decision differs in any respect from an examiner’s
rejection. Leithem reiterates the long-standing principle that any different
language or rationale employed must change the thrust of the rejection in
order to be deemed to be a new ground. Leithem, 661 F.3d at 1319 (quoting
In re Kronig, 539 F.2d 1300, 1302–03 (CCPA 1976)). Further, Leithem
admonishes that “[t]he Board need not recite and agree with the examiner’s
rejection in haec verba to avoid issuing a new ground of rejection.”
Leithem, 661 F.3d at 1319.
Appellant seeks to have our treatment of its Appeal Brief
nonanalogous art argument designated as a new ground of rejection.
Request 38. Appellant maintains that the determination in the Decision of
the second prong of the two-part test for nonanalogous art, i.e., that the
secondary reference Dittmer would be reasonably pertinent to a problem
faced by Appellant, was not before raised. Id. at 41. This assertion is
correct. However, it is not necessary to the determination that Dittmer is
analogous art. In response to Appellant’s Appeal Brief argument that
Dittmer “is not properly analogized to the claimed invention,” for various
reasons, and without specifically addressing the two prongs of the
nonanalogous art test (Appeal Br. 10), the Examiner found that Dittmer is
from the same field of endeavor as is Appellant’s invention. Ans. 12. There
having been no rebuttal argument to the contrary (no Reply Brief filed), the
decision noted that
The Examiner, correctly applying the two-prong analysis for
nonanalogous art, determines that Dittmer is in the field of
Appellant’s endeavor, to wit, ankle braces having lateral and
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medial upright extension, and lateral and medial sidewalls.
Ans. 12. We fail to see error in this determination.
Decision 5. The Decision thus affirmed the Examiner’s unrebutted position
that Dittmer is within Appellant’s field of endeavor, and thus constitutes
analogous art. As such, we decline to denominate our determination as to
Dittmer being analogous art as a new ground of rejection.
Appellant maintains that the discussion in the Decision directed to
Appellant’s argument that the strap material of Dittmer is not suitable for
walking, should be designated as a new ground of rejection. Request 53.
The specific language cited is as follows:
sports activities, and if Dittmer’s hook-and-loop strap were
somehow not up to the task, the ordinary creativity of the
person skilled in the art would select some different material
from among known possibilities. It is well settled that an artisan
must be presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA1962). After all, “[a] person of ordinary skill is also
a person of ordinary creativity, not an automaton.” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398,421 (2007).
Id., quoting Decision 6. Appellant argues that reference to the possibility of
using a different material was not asserted by the Examiner. Request 54.
The affirmance of the Examiner’s position in the Decision is not dependent
on the above discussion, which was provided simply as a further observation
relative to the issue. Instead, the Decision specifically addresses Appellant’s
argument and the Examiner’s position in a discussion preceding that quoted
by Appellant:
Appellant next argues that the Dittmer strap (60) would
not likely be equal to the rigors of repeated, weight-bearing
contact during normal walking or sports activity, and that
extensive modification would be involved in the Examiner’s
proposed modification in order to perform similarly to the
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claimed invention. Appeal Br. 10–11. Appellant asserts that the
combination “would likely destroy the function of the [Dittmer]
device.” Id. at 11.
As to the latter, any assertion of the impairment or
destroying of a function is germane only as to the reference,
here, Birmingham, proposed to be modified. The assertion is
therefore not indicative of Examiner error. As to the former,
the Examiner responds that Dittmer discloses that its strap may
be made of hook-and-loop material, which is a flat, durable
material that is capable of being walked on, and that, in the
course of a wearer using the Dittmer splint in transporting the
wearer to obtain medical treatment, the wearer may well have
to walk with the splint in position wrapped around the wearer’s
shoe and in contact with the ground. Ans. 12. The Examiner
additionally points out that any particular use of the claimed
ankle brace, such as to play sports, does not appear in any way
in the claims.
Decision 5–6. We decline to designate the additional discussion highlighted
by Appellant as a new ground of rejection in view of the foregoing. The
same is true of the additional discussion pointing to the disclosure in
Appellant’s Specification as to the listing of the various suitable materials
from which the strap can be made—the discussion is in addition to the
specific affirmance of the Examiner’s position. See Request 54–55, citing
Decision 6.
Appellant also seeks to have the discussion in the Decision directed
to Appellant’s Appeal Brief argument as to the addition of a second strap to
Birmingham as causing discomfort, as a new ground of rejection.
Request 90–91. Appellant identifies the following passage in the Decision:
Any discomfort brought about by the provision of a
second strap adding compressive forces to the shoe and foot are
seen as being readily addressed within the level of skill in the
art, as the brace is fitted to a user’s shoe and leg. It is less so the
addition of compressive force than it is the securement at a
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second location that drives the Examiner’s proposed
combination. As to the argument regarding the single strap of
Birmingham not having been shown to be inadequate, such is
not a requirement in establishing the obviousness of including a
further strap at a separate location. Further, Birmingham itself
discusses an embodiment (Figures 5–7) in which a lower
fastening system and an upper fastening system operate in
concert, “[t]o further secure and stabilize” the attachment of the
device to a shoe. Birmingham, col. 5, 11. 11–22.
Id. at 90, quoting Decision 7–8. Appellant contends that these constitute
new facts and rationales, and thus amount to a new ground of rejection.
Request 91. Appellant fails to acknowledge the following passage, which
precedes and gives context to the above passage in the Decision, and which
directly addresses that we determined the Examiner’s position to not be in
error:
The Examiner points out that making the proposed modification
to add a strap as a lower fastening system, would provide
another point of securement of the brace to the shoe and foot, to
supplement the existing upper fastening system in more
securely and firmly holding the medial and lateral sidewalls in
place. Ans. 14. The Examiner additionally notes the
positioning of the existing Birmingham strap as being in the
vicinity of the neck and head of the talus of the foot, whereas
the Dittmer strap extends over the top of the midfoot of the
user, and, thus, there would be no spatial interference of one
with the other in the combination. Id. We believe the
Examiner has the better position in this regard, but even if one
strap were to partially cross over the other, we are not apprised
of any detrimental effect this might have.
Decision 7. The discussion as to alleged discomfort is nothing more than an
explanation as to why Appellant’s argument to the effect that the additional
strap would cause discomfort did not apprise us of Examiner error.
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We note, in summation, that Appellant does not specifically contend
that any of the above complained-of passages in the Decision change the
thrust of the Examiner’s rejection. As discussed, the passages merely
contain additional considerations flowing from the rejection and arguments
made by Appellant in the Appeal Brief. These are quite unlike the situations
presented in Lethem and Imes, which both involved interpretations (findings
of fact) of portions of the references relied upon that differed substantively
from the interpretations initially employed by the examiner in the rejection
appealed from. As such, those decisions are not squarely on point with the
situation in the present appeal, and do not compel or even suggest that the
excerpts from the Decision ought to be designated as new grounds of
rejection.
For the foregoing reasons, the Request is denied.
SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Denied Granted
1–6, 8 103 Birmingham,
Dittmer
1–6, 8
7 103 Birmingham,
Dittmer, Crispin
7
Overall
Outcome
1–8

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
8 112(b) Indefiniteness 8
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1–6, 8 103 Birmingham,
Dittmer
1–6, 8
7 103 Birmingham,
Dittmer, Crispin
7
Overall
Outcome
1–8
DENIED

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CAPP, Administrative Patent Judge, concurring.
I concur, in all respects, with the majority decision. I write separately
to comment on what I perceive to be a manifest abuse of our rehearing
procedure.
During the main appeal from which this request is taken, Appellant
was represented by the firm of Tarolli, Sundheim, Covell & Tummino LLP
(hereinafter “Prior Counsel”). Appeal Br. 18. We issued our Decision on
April 2, 2021. Thereafter, on June 2, 2021, Appellant filed the instant
Request. The request was filed by the law firm of Pilloff, Passino &
Cosenza, LLP (hereinafter “New Counsel”). There is no indication
anywhere in the prosecution history that Prior Counsel’s power of attorney
to represent Appellant has been revoked and that a power of attorney has
been filed by or behalf of Appellant to be represented before us by New
Counsel.
Appellant’s Specification is barely 10 pages long. See generally Spec.
Appellant’s Appeal Brief is 18 pages long and contains barely 10 pages of
argument. See generally Appeal Br. There is no Evidence Appendix
attached to the Appeal Brief. Appeal Br. 23. There is no Affidavit or
Declaration referred to throughout the entirety of the Appeal Brief. See
generally Appeal Brief.
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.F.R. § 41.52. A request for rehearing “‘must state with particularity the
points believed to have been misapprehended or overlooked by the Board”’
and “must specifically recite ‘the points of law or fact which appellant feels
were overlooked or misapprehended by the Board.”’ Ex parte Quist, 95
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USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting MPEP
§ 1214.03).
A request for rehearing may not rehash arguments originally made in
the Brief. A request for rehearing is not an opportunity to merely express
disagreement with a decision. The proper course for an applicant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided.
See 35 U.S.C. §§ 141, 145.
It goes without saying that a Request for Rehearing is not an
opportunity to raise, for the first time, issues and arguments that were not
raised, in the first instance, during the main appeal. Indeed, our rules
prohibit raising new arguments, for the first time, in a Reply Brief if the
argument was not raised in the opening appeal brief. 37 C.F.R.
§ 41.41(b)(2). Our rules governing rehearing limit raising new arguments to
the following situations: (1) responding to a new ground of rejection
designated as such in the Decision; (2) asserting that the Decision contains
an undesignated new ground of rejection; and (3) where there has been a
recent relevant case decision from the Board or a Federal Court. 37 C.F.R.
§ 41.52.
Time and space will not permit a thorough and exhaustive discussion
of Appellant’s violations of our rules and procedures in the Request.
However, a few representative examples should suffice to make the point.
A careful reading of Appellant’s Appeal Brief reveals that Appellant
never raised any issue with respect to Secondary Considerations of Non-
Obvious in general and the factor of Long-Felt Need and Failures of Others,
in particular. See generally Appeal Br. However, Appellant, in the Request,
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raises an issue of secondary considerations of non-obvious for the first time.
Request 48–49. More particularly, Appellant relies on the case of Leo
Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) for
the proposition that a thirteen year gap between publication of a reference
and the filing date of a patent application is, in and of itself, evidence of a
long felt need. Id. Not only is Appellant’s argument new, it completely
misrepresents the Leo Pharma case. The Leo Pharma court determined,
under the specific facts of that case, that there was evidence of a long felt,
but unmet need for a single formulation to treat psoriasis. Leo Pharma, 726
F.3d at 1359. There is nothing in Leo Pharma that abrogates or overrules
the general rule regarding the mere passage of time with respect to
obviousness. See In re Kahn, 441 F.3d 977, 990‐991 (Fed. Cir. 2006)
(explaining that absent a showing of long‐felt need or the failure of others,
the mere passage of time without the claimed invention is not evidence of
nonobviousness). It may be true that evidence of a long-felt need for the
solution to a recognized and persistent problem may lend support to a
conclusion that an invention was nonobvious. Apple Inc. v. Samsung
Electronics Co., Ltd., 816 F.3d 788, 805 (Fed. Cir. 2016). However, the
idea behind this secondary consideration is that if a particular problem is
identified by an industry but left unsolved, the failure to solve the problem
(despite the incentive to do so) supports a conclusion of nonobviousness. Id.
citing Natalie A. Thomas, Secondary Considerations in Nonobviousness
Analysis: The Use of Objective Indicia Following KSR v. Teleflex, 86
N.Y.U.L. Rev. 2070, 2078 (2011). Thus, to demonstrate long felt need, the
patentee must point to an “articulated identified problem and evidence of
efforts to solve that problem” which were, before the invention,
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unsuccessful. Texas Instruments v. Int'l Trade Comm'n, 988 F.2d 1165,
1178 (Fed. Cir. 1993). Long-felt need is analyzed as of the date of an
articulated identified problem and evidence of efforts to solve that problem.
Id.
Here, we have a situation where Appellant did not raise long-felt need
as a secondary consideration in the Appeal Brief, no evidence of long-felt
need was presented during the main appeal. Appellant, neither in the Appeal
Brief nor the Request, identifies or otherwise points to evidence of: (1) what
the “problem” is; (2) that such unidentified “problem” was recognized in the
industry; or (3) attempts to solve such problem without success prior to
Appellant’s date of invention. Nevertheless, Appellant raises this argument
for the first time in a Request for Rehearing, arguing that the mere passage
time is evidence of non-obviousness despite controlling case law to the
contrary (i.e., Kahn), and misrepresenting and misapplying substantially
irrelevant case law (Leo Pharma) in an apparent attempt to mislead us.
A substantial lack of professionalism and decorum permeates the
Request. For example, Appellant makes repeated references to a case
purportedly named “In re Smith.” Appeal Br. 72, 142, 143, 145, 146, 149,
150, 151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 165, 166, 175.
Nowhere in the Request is there a citation to either Westlaw, a Federal
Reporter Series, or the U.S. Patent Quarterly reporter series. Id. Page 145
of the Request refers to a decision announced by the Federal Circuit in
September of 2017 as appeal number 16-2303. After a search through
Westlaw, we determined that Appellant was likely referring to the case of In
re Smith International, Inc., 871 F.3d 1375 (Fed. Cir. 2017), which has
parallel citations to Westlaw and the Patent Quarterly reporter series. No
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explanation is offered as to why Appellant, in the year 2021, could not do us
the courtesy of stating the correct name of the case or citing to an official
reporter series. Nevertheless, Appellant deigns to lecture us for more
than 30 pages on the topic of proper application of the Broadest Reasonable
Interpretation standard of claim construction. Request, 142–175.
There is nothing particularly remarkable about Smith. Smith is merely
a rare example of where a Board decision is reversed based on an erroneous
claim interpretation. We apply the Broadest Reasonable Interpretation in
deciding ex parte appeals in thousands of cases every year and our track
record of affirmance before the Federal Circuit on appeal is a matter of
public record. The mere prospect that a rare reversal occurs, based largely
on the particular facts, specification, and claims in a particular case, is not an
occasion for us to be lectured, at extensive length, by Appellant on our claim
construction in the instant case which involves different facts, different
claim language, a different Specification, and a different prosecution history
than we were presented in Smith.
In the instant case during the main appeal, Appellant never argued that
the Examiner’s rejections were based on an erroneous claim construction.
See generally Appeal Br. Appellant, in the Request, never details where or
how we supposedly overlooked or misapprehended anything that was raised
in the Appeal Brief regarding claim construction.
We understand that patent applicants have the right to substitute their
designated legal representatives during the course of patent prosecution.
With that understanding, Requests for Rehearing are limited to matters
overlooked or misapprehended by the Panel in rendering the original
decision. 37 C.F.R. § 41.52. The operative language in the foregoing
Appeal 2020-005585
Application 15/074,339

19
sentence is “by the Panel.” A Request for Rehearing is not an opportunity
for New Counsel to raise matters that may have been overlooked or
misapprehended by Prior Counsel during prosecution of the main appeal.
Stated differently, a Request for Rehearing is not an invitation for New
Counsel to get a “do over” on the main appeal.
In my opinion, Appellant’s Request is manifestly abusive in its length,
in raising issues for the first time, in merely rehashing matters decided
adversely to it in the Decision, in its overall colloquial cavalier tone,5 and in
its overall lack of professionalism.
I close by reiterating that I otherwise completely concur with the
majority Decision.

5 The Request is replete with irrelevant, colloquial remarks and references to
John Wayne movies, Indiana Jones moves, and Star Wars movies. See e.g.,
Request 176.