Ex Parte 7,547,114 B2 et al

Patent Trial and Appeal Board

Sep 19, 2014

90011694 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/011,694 05/16/2011 7,547,114 B2 1055.101 1352
53720 7590 09/22/2014
Chen Yoshimura LLP
Attention Ying Chen
333 W. El Camino Real, Suite 380
Sunnyvale, CA 94087
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/22/2014 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 YLX LTD.
Patent Owner
____________

Appeal 2014-003969
Reexamination Control 90/011,694
Patent US 7,547,114 B2
Technology Center 3900
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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I. STATEMENT OF THE CASE
Owner has filed a Request for Rehearing under 37 C.F.R. § 41.52
(hereinafter “Request”) on June 24, 2014 for reconsideration of our
affirmance of the Examiner’s rejection of claim 26 in a Decision mailed
April 25, 2014 (hereinafter “Decision”).
The Decision reversed the Examiner’s rejection under 35 U.S.C.
§ 102(b) of claims 31 and 32 over Kato; and affirmed the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1–4, 7–10, 12, 13, 15–19, and
26–30 over Kato and McGuire, and of claims 6, and 20–23 over Kato,
McGuire, and Harbers.
We have reconsidered our Decision regarding claim 26 in light of
Owner’s comments in the Request. We grant the Rehearing Request to the
extent that we consider the Owner’s arguments infra, but DENY the request
to modify the Decision regarding claim 26. As noted infra, we maintain our
affirmance of the Examiner’s rejection of claim 26.

II. ISSUE
The issue we address on this Request is whether Owner has identified
that the Board has misapplied the relevant law or misapprehended Owner’s
arguments set forth in the Appeal Brief by finding that Owner has failed to
show error in the Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a)
over Kato and McGuire.

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III. ANALYSIS
A “request for rehearing must state with particularity the points
believed to have been misapprehend or overlooked in rendering the Board’s
opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1).
In our prior Decision, we reversed the Examiner’s rejection of claims
31 and 32 under 35 U.S.C. § 102(b) over Kato (Decision 8–9), but affirmed
the rejection of claim 1 (and claim 26 depending therefrom but not argued
separately) under 35 U.S.C. § 103(a) over Kato in further view of McGuire
(Decision 9–13).
Owner contends “because of the similarity of the language of claim 26
[which was rejected under 35 U.S.C. § 103(a) over Kato and McGuire] and
the relevant element of claim 31[which as rejected under 35 U.S.C. § 102(b)
over Kato],” the Examiner’s rejection of claim 26 “cannot stand” (Request
2). Although Owner concedes that “the patent owner did not separately
argue the patentability of claim 26 in its Appeal Brief” (Request 2), Owner
contends “the rejection of claim 26 should have been reversed for the same
reasons that the rejection of claims 31 and 32 is reversed” (Request 1).
In our prior Decision, we only considered those arguments actually
made by Owner in the Appeal Brief. As Owner concedes, “the patent owner
did not separately argue the patentability of claim 26 in its Appeal Brief”
(Request 2). That is, Owner could have separately argued the patentability
of claim 26 but chose not to do so.
It is inappropriate for Owner to discuss for the first time in a Request
for Rehearing matters that could have been raised in the Appeal Brief. “The
failure to raise all issues and arguments diligently, in a timely fashion, has
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consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision). See also 37 C.F.R. §41.52 (a)(1): Rehearing . . .
“Arguments not raised, and Evidence 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 . . .
(2) Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board's decision contains an undesignated
new ground of rejection are permitted.”
In our prior Decision, we only consider whether Owner has shown the
Examiner erred in rejecting claims 31 and 32 as being anticipated by the
teachings of Kato, and in rejecting claim 1 (and thus claim 26 depending
therefrom but not separately argued) as obvious over the teachings of Kato
in further view of McGuire (Decision 9–13). As we found in our Decision,
“Owner has not shown the Examiner erred in rejecting independent claim 1”
and “does not provide separate arguments” for claim 26 depending
therefrom (Decision 13). Thus, as set forth in our Decision, claim 26 falls
with claim 1 over Kato in view of McGuire under 35 U.S.C. § 103(a) (id.).
Furthermore, although Owner contends in the Request “the rejection
of claim 26 should have been reversed for the same reasons that the rejection
of claims 31 and 32 is reversed” (Request 1), we note that the consideration
as to whether a claim is anticipated by the teachings of Kato (i.e., claims 31
and 32) would be different from the consideration as to whether a claim
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would have been obvious over the combined teachings of Kato in further
view of McGuire (i.e., claim 1 and claim 26 depending therefrom).
Because Owner merely sets forth new arguments with respect to claim
26 that Owner did not make in the Appeal Brief (Request 1–2), Owner has
not identified that the Board has misapplied the relevant law or
misapprehended the Owner’s argument. We therefore maintain our
affirmance of the Examiner’s rejection of claim 26 under U.S.C. § 103(a)
over Kato and McGuire.

IV. CONCLUSION AND DECISION
We have carefully considered the arguments raised by Owner in the
Request for Rehearing. Although we have considered our prior Decision in
light of the Request for Rehearing, we decline to modify our prior Decision
in any respect. We are still of the view that the invention set forth in claim
26 is unpatentable over the applied prior art under 35 U.S.C. § 103(a) based
on the record before us in the original appeal.
As explained above, Owner’s basis for requesting rehearing is not
based upon any issue misapprehended or overlooked, but amounts to
presentation of new arguments not set forth in the Appeal Brief, which is not
a proper use for Requests for Rehearing.

REHEARING DENIED

gvw
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Patent Owner:
Chen Yoshimura LLP
Attention Yin Chen
333 W. El Camino Real
Suite 380
Sunnyvale, CA 94087

Third Party Requester:
Dariush G. Adli
Adli Law Group P.C.
633 West Fifth Street
Suite 5880
Los Angeles, CA 90071