Ex Parte LIN

Patent Trial and Appeal Board

Jul 27, 2016

12869910 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/869,910 08/27/2010
49579 7590 07/27/2016
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
Shengli LIN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2875.4890000 8774
EXAMINER
PAPE, ZACHARY
ART UNIT PAPER NUMBER
2835
MAILDATE DELIVERY MODE
07/27/2016 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 SHENGLI LIN
Appeal2014-003058
Application 12/869 ,910
Technology Center 2800
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
MELISSA A. RAAP ALA, Administrative Patent Judges
DIXON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEii .. R!J'.JG
Appellant requests rehearing of our decision, mailed April 20, 2016
("Decision"). 37 C.F.R. §§ 41.52(a)(3), 41.52(a)(4). In the Decision, we
affirmed the obviousness rejection of claims 1-9, 11-19, 21, and 22, and we
reversed the Examiner's obviousness rejection of claims 10 and 20. For the
reasons discussed below, we grant Appellant's request.
Appeal2014-003058
Application 12/869 ,910
DISCUSSION
35 U.S.C. § 103(a)
Appellant contends the Board's Decision contains an undesignated
new ground of rejection under 35 U.S.C. § 103(a) because the Decision
relies upon the Steinfeld reference. Req. for Reh' g 2--4. Appellants argue
the new ground of rejection is clearly erroneous because (1) the Steinfeld
reference's teachings do not remedy Minegishi's deficiencies and (2) the
modification proposed in the Decision would change Minegishi' s principle
of operation. Id. at 5-9.
We agree with Appellant that our reliance on the Steinfeld reference
in the Decision amounts to a new ground of rejection of claims 1-9, 11-19,
21, and 22. See Decision 3-7. Because the Steinfeld reference and
Appellant's related arguments were filed after the Final Rejection, 1 the
Examiner has not fully developed the administrative record concerning the
Steinfeld reference. For example, the Examiner has not developed the
record concerning the Steinfeld reference's disclosure that single-layer
ground planes and their relative advantages were known in the prior art.
See, e.g., Steinfeld 1: 18-58. We therefore withdraw the new ground of
rejection of claims 1-9, 11-19, 21, and 22 and leave it to the Examiner to
consider in the first instance whether these claims would have been obvious
in light of the Steinfeld reference's teachings, alone or combined with other
references (including those not currently of record). Additionally, the
Examiner may consider whether there is adequate written description
support for the recited "single-layer ground plane."
1 The Steinfeld reference was first introduced by Appellant in the arguments
presented in the amendment after final rejection, filed April 2, 2013.
2
Appeal2014-003058
Application 12/869 ,910
Finally, because we agreed with Appellant regarding the Examiner's
application of the prior art combination set forth in the Final Rejection, see
Decision 4--7, we reverse each of the Examiner's obviousness rejections.
CONCLUSIONS
We modify the Decision in the following two ways: We withdraw the
new ground of rejection of claims 1-9, 11-19, 21, and 22, and we reverse the
Examiner's rejections of claims 1-9, 11-19, 21, and 22 as obvious over
various combinations of Minegishi, Renken, Wright, and Chao. We do not
modify the Decision with respect to the conclusion that the Examiner
erroneously rejected claims 10 and 20.
DECISION
For the above reasons, we maintain the reversal of claims 10 and 20
based upon obviousness. We withdraw the new ground of rejection of
claims 1-9, 11-19, 21, and 22 and reverse the Examiner's rejections of claims
1-9, 11-19, 21, and 22.
REQUEST FOR REHEARING GRANTED
3