Ex Parte Johnson

Patent Trials and Appeals Board

Oct 7, 2013

12283242 - (R) (P.T.A.B. Oct. 7, 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.
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

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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

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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

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DENIED

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