Ex Parte Boehm et al

Board of Patent Appeals and Interferences

Jul 12, 2012

10499107 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL BOEHM, HORST REIGL,
and THEO BURCHARD
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Appeal 2010-011240
Application 10/499,107
Technology Center 1700
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our decision, mailed April 25, 2012,
wherein we affirmed the Examiner's decision rejecting the appealed claims
under 35 U.S.C. § 103(a).
In our decision, we reiterated the Examiner's finding that the Figure
6b embodiment of Tooth contains a through opening as required by
representative sole independent claim 1, and we acknowledged Appellants'
argument that the finding is erroneous (Dec. 3). However, we stated that
Appeal 2010-011240
Application 10/499,107

2
Appellants had failed to identify the alleged error with reasonable specificity
and had failed to explain their possible belief that claim 1 should be
considered to exclude security thread 4 of the Figure 6b embodiment (id.).
Concerning our statement, Appellants contend that "the Board's
holding at page 3 amounts to a new ground of rejection to which Appellants
can respond" (Req. 2). Appellants then present arguments for the
proposition that a security thread cannot be present in the through opening of
claim 1 (id. at 3; see also 3-5).
We do not agree with Appellants' contention that our statement on
page 3 of the Decision amounts to a new ground of rejection. Moreover, we
will not consider Appellants' arguments that claim 1 excludes a security
thread since these arguments were not previously raised in the briefs before
the Board as expressly noted in our Decision (Dec. 3). See 37 C.F.R.
§ 41.52(a)(1).
Appellants also reiterate their position that the security thread of
Tooth prevents the through opening from satisfying the claim 1 requirement
that the opening does not have a sharply cut edge throughout the edge area
(Req. 5-6).
We continue to regard this position as unpersuasive for the reasons
expressed in our Decision (Dec. para. bridging 3-4).
The Request for Rehearing is denied.
DENIED

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