Ex Parte Grosz et al

Patent Trial and Appeal Board

Mar 20, 2013

10139058 (P.T.A.B. Mar. 20, 2013)

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.
10/139,058 05/03/2002 INV001Diego Fernando Grosz Grosz 2-4-9
(ALU/123903)
4054
46363 7590 03/20/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
ALAGHEBAND, ABBAS H
ART UNIT PAPER NUMBER
2636
MAIL DATE DELIVERY MODE
03/20/2013 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 DIEGO FERNANDO GROSZ, STEFAN HUNSCHE,
and GREGORY RAYBON
____________________

Appeal 2010-003428
Application 10/139,058
Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and JOHN A. EVANS,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-003428
Application 10/139,058

2
INTRODUCTION
Appellants’ Request for Rehearing, filed February 28, 2013, contends
that we erred in our Decision on Appeal entered December 31, 2012, in
which we affirmed the rejection of claims 8-30 and reversed the rejection of
claims 4-6.1
OPINION
We will maintain the rejection.

ANALYSIS
Appellants argue that claims 8 and 29, like claim 4, recite “generating
pulses that spread faster than the original signal upon propagation in a fiber”
(Req. for Reh’g 3). Appellants reason that because the Board found error in
the Examiner’s finding that Mamyshev inherently teaches this limitation
(Id.), the Board should reverse the rejection of claims 8-28 and 29-30, as it
reversed the rejection of claims 4-6 in the Decision (Req. for Reh’g 4).

37 C.F.R. § 41.52 states in relevant parts:
(a)(1) Appellant may file a single request for rehearing
within two months of the date of the original decision of the
Board….The request for rehearing must state with particularity
the point believed to have been misapprehended or overlooked
by the Board. Arguments not raised in the brief before the
Board and evidence not previously relied upon in the brief and
the reply brief(s) are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this
section. …

1 Claims 1-3 and 7 have been cancelled.
Appeal 2010-003428
Application 10/139,058

3
(2) Upon a showing of good cause, 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 made pursuant to § 41.50(b) are permitted. (Emphasis
added.)

First, Appellants are required to state with particularity the point(s)
believed to have been misapprehended or overlooked by the Board. 37
C.F.R. § 41.52(a)(1). The Request for Rehearing does not identify any such
points; rather, it merely alleges that the outcome in the Decision, whereby
the rejection of claims 8 and 29 is affirmed but the rejection of claim 4 is
reversed, is inconsistent. We have reviewed the Decision and conclude that
we did not misapprehend or overlook the fact that one rejection was reversed
but another affirmed.
Second, Appellants did not argue in the Brief that the Examiner erred
in rejecting claims 8 and 29 because Mamyshev does not expressly or
inherently teach “generating pulses that spread faster than the original signal
upon propagation in a fiber.” Appellants raised this argument only with
respect to claim 4. Accordingly, this argument, not previously raised in the
Appeal Brief, is not permitted in the request for rehearing. See 37 C.F.R.
§ 41.52(a)(1).
We therefore conclude that Appellants have not shown any points
which we misapprehended or overlooked in our Decision.

Appeal 2010-003428
Application 10/139,058

4
CONCLUSION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision affirming the rejection of
claims 8-30 under 35 U.S.C. § 103(a), and reversing the rejection of claims
4-6, but we decline to modify the decision in any way.

REHEARING DENIED

rwk