Ex Parte Huang et al

Patent Trial and Appeal Board

Aug 28, 2013

10910867 (P.T.A.B. Aug. 28, 2013)

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.
10/910,867 08/04/2004 Kai Huang 2003P12386US01 9057
7590 08/29/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
BIBBEE, JARED M
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
08/29/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KAI HUANG and RAMESH SUBRAMANIAN
________________

Appeal 2011-001310
Application 10/910,867
Technology Center 2100
________________

Before THU A. DANG, JAMES R. HUGHES, and
KALYAN K, DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on July 23, 2013, for reconsideration
of our Decision mailed June 28, 2013 (hereinafter “Decision”).

ANALYSIS
In a Request for Rehearing received July 23, 2013, the Appellants
contend that:
Appeal 2011-001310
Application 10/910,867

2
Accordingly, Appellant [sic] was appropriately responding in
the Reply Brief to an argument presented in the Examiner's
Answer and was not using the Reply Brief to introduce new
arguments. The Board has misapprehended this appropriate use
of the Reply Brief, which is fully compliant with the applicable
rules, see 41.41(b)(2). As a consequence of this error by the
Board, the Board declined to address in the Decision arguments
appropriately presented by Appellant in the Reply Brief, which
arguments were responsive to an argument raised by the
Examiner in the Examiner's Answer, and thus under the rules
such arguments should have been considered by the Board.
Appellant respectfully requests the Board to consider such
arguments which the Board improperly declined to address in
the Decision.
(Req. Reh’g. 2.)
1

We have carefully reviewed the Decision of June 28, 2013, in light of
the Appellants’ comments in the Request for Rehearing, and we find no
errors therein. We decline to change our prior Decision for the reasons
discussed infra.
As noted our Decision, absent a showing of good cause, the Board is
not required to address arguments in the Reply Brief that could have been
presented in the principal Brief, and with respect to all claims before us on
appeal, arguments which the Appellants could have made but chose not to

1
We refer to Appellants’ Reply Brief (“Reply Br.”) filed Oct. 1, 2010, and
Appeal Brief (“App. Br.”) filed June 15, 2010 and Request for Rehearing
(“Req. Reh’g.”) filed July 23, 2013. We also refer to our Decision on
Appeal (“Dec.”) mailed June 28, 2013.
Appeal 2011-001310
Application 10/910,867

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make have not been considered and are deemed to be waived. Dec. 7. See
37 C.F.R. § 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed.
Cir. 2004). This reasoning is applicable in the present case.
With respect to the Appellants’ point of error, Appellants argued in
the Reply Brief 1) “that the Examiner does not expressly point out which
component of Zhao is being construed by the Examiner as the claimed
processor,” and 2) that the Examiner errs “that Zhao teaches ‘processing the
groups of inspection data separately to assess a condition of the thermal
barrier coating. . .’.” (Reply Br. 2.) However, these arguments could have
been raised in the principal Brief, and were not in response to a change of
position in the Examiner’s findings in the Answer.
In particular, in the Final Office Action dated May 22, 2009, (“FOA”)
the Examiner found that Zhao would have taught or suggested the
“processor” as claimed. FOA, 4. The Examiner also found that Zhao would
have taught or suggested “processing the groups of inspection data
separately to assess a condition of the thermal barrier coating with respect to
each distinct quantification of the selected performance criteria.” FOA 7.
The Appellants have not rebut the Examiner’s findings in the principal Brief
and the findings, conclusions, and rationale submitted by the Examiner did
not change from the Final Office Action and the Answer.
Therefore, absent a showing a good cause, the Appellants’ arguments
regarding the Examiner’s findings should have been addressed in the
principal Brief. These new arguments presented in the Reply Brief are not
considered to be timely. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (“informative”).
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Application 10/910,867

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Accordingly, we do not agree with the Appellants that we have
misapprehended the claims or the Appellants’ arguments.

CONCLUSION
In view of the foregoing discussion, we deny the Appellants’ request
for rehearing. We decline to modify our original Decision.

REHEARING DENIED

ELD