Ex Parte JohnsonDownload PDFPatent Trials and Appeals BoardOct 7, 201312283242 - (R) (P.T.A.B. Oct. 7, 2013) Copy Citation 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. 12/283,242 09/09/2008 Joseph Allen Johnson 1700 6796 7590 10/07/2013 Joseph Johnson P.O. Box 411821 Melbourne, FL 32941 EXAMINER NOVOSAD, CHRISTOPHER J ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 10/07/2013 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 JOSEPH ALLEN JOHNSON ____________________ Appeal 2011-004134 Application 12/283,242 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-004134 Application 12/283,242 2 STATEMENT OF THE CASE Appellant filed a Request for Rehearing (“Request”) on September 16, 2013, of the Decision mailed July 18, 2013, affirming the following rejections: Claim 7 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1, 2, 4, and 7 under 35 U.S.C. § 112, second paragraph, as being indefinite; claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable over Slauf (US 6,705,654 B2, iss. Mar. 16, 2004) in view of Borah (US 2,750,222, iss. Jun. 12, 1956); and claim 7 under 35 U.S.C. § 103(a) as unpatentable over Slauf in view of Borah, and further in view of Hyman (US 3,669,133, iss. Jun. 13, 1972). In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes certain points, in particular, that Appellant believes the Board misapprehended or overlooked in reaching its Decision. DISCUSSION First, Appellant argues our Decision was in error because the Board overlooked an unlawful statement made by the Examiner (Request 2). Specifically, Appellant argues the Examiner unlawfully required on page 5 of the Final Rejection that any evidence traversing an obviousness rejection be contained within the original disclosure, and thus the Examiner would not consider any other evidence (id.). Appellant further argues that because we based our Decision on the Examiner’s findings, our Decision is therefore erroneous (id.). Even assuming arguendo that Appellant has correctly understood the Examiner’s statement, which we note was made with respect Appeal 2011-004134 Application 12/283,242 3 to the Examiner’s taking of Official Notice, the Board considered all timely filed evidence and arguments in rendering its Decision. Although Appellant states that he was prevented from presenting timely evidence of unexpected results (Request 3-4), the record does not so indicate. Further, Appellant does not submit evidence that he was prevented from timely presenting evidence of unexpected results. Appellant then argues the Examiner unlawfully directed Appellant to remove all functional or operational language from the claims (Request 4-5). We note, however, that the Examiner’s Answer does not contain any rejections or objections on this basis. Further, our affirmance of the rejections under 35 U.S.C. § 112, first and second paragraphs, is based on failure to meet the written description requirement and for the use of a trademark. Finally, Appellant argues the Board did not consider his letter of March 6, 2012, providing evidence of copying. We note, however, that this evidence was not timely filed, and thus we properly excluded this letter when rendering our Decision. DECISION We have carefully considered the arguments that Appellant has set forth in the Request but, for the foregoing reasons, we do not find them persuasive as to our affirmance of the rejection of the claims under 35 U.S.C. § 112, first and second paragraphs, and 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2011-004134 Application 12/283,242 4 DENIED mls Copy with citationCopy as parenthetical citation