12141452 (P.T.A.B. Apr. 25, 2013)

Ex Parte Holland

Patent Trial and Appeal BoardApr 25, 2013

12141452 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER D. HOLLAND ____________ Appeal 2011-002444 Application 12/141,452 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE and CARL M. DeFRANCO, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Appeal 2011-002444 Application 12/141,452 2 STATEMENT OF THE CASE Christopher D. Holland (Appellant) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated May 3, 2013, of our decision mailed April 29, 2013 (hereinafter “Decision”). In the Decision, we1 affirmed the Examiner’s rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Merk ‘767 (US 1,899,767, iss. Feb. 28, 1933) and Merk ‘449 (US 1,923,449, iss. Aug. 22, 1933) and reversed the Examiner’s remaining rejections. OPINION Appellant presents two points which he alleges this panel has misapprehended. We grant the Request to the extent that we have considered the arguments relating to these points, but otherwise deny the Request. Regarding claim 21, Appellant contends that we “misapprehended the operation of the lubricator disclosed [by] Merk ‘449.” Request 2. Appellant asserts that “there is no disclosure or suggestion in Merk [‘449] that the lubricant will find its way to the top surface of the rail head, as set forth in claim 21.” Request 3. We did not misapprehend this point. Instead, we addressed the point at page 8, line 25 - page 9, line 3 of the Decision. We further note that claim 21 does not positively recite that the lubricant is applied directly to the top surface of the rail head as argued by Appellant. Regarding claim 22, Appellant contends that we “misapprehended the operation of the lubricator disclosed [by] Merk ‘449.” Request 4. Appellant asserts that “when the wheel is present . . . applicator 15 [is] to be spaced (gapped) away from the rail head.” Id. We did not misapprehend this 1 Administrative Patent Judge Kile, who participated in the original Decision, is no longer a member of the Board. Administrative Patent Judge DeFranco has replaced him on the panel. Appeal 2011-002444 Application 12/141,452 3 point. Instead we addressed the point at page 9, lines 6-15 of the Decision. Appellant has failed to identify where Merk ‘449 discloses that spring 61 urges the applicator 15 away from the rail head when the wheel is not present. We will not read into a reference a teaching away from a proposed combination when no such language exists. See Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). DECISION We grant the Request to the extent that we have considered the arguments but otherwise deny the Request. DENIED mls