Ex Parte Roit et al

Patent Trial and Appeal Board

Jul 28, 2016

12629337 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/629,337 12/02/2009
15624 7590 08/01/2016
Ryan Alley Intellectual Property Law
P.O. Box 3698
Arlington, VA 22203
FIRST NAMED INVENTOR
Willard J. Roit
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.
5.0010.1 (24ES235260) 7651
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLARD J. ROIT and
MARTIN F. BADEWITZ, JR.
Appeal2013-002291
Application 12/629,337
Technology Center 3600
Before LINDA E. HORNER, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Willard J. Roit and Martin F. Badewitz, Jr. (Appellants) filed a
request for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request), dated
July 18, 2016, of our decision mailed June 10, 2016 (hereinafter
"Decision"). In the Decision, we affirmed the Examiner's rejections of
claims 1, 3-6, and 10 under 35 U.S.C. § 102(b) and of claims 11, 13-15, and
18-22 under 35 U.S.C. § 103(a). We reversed the rejection of claims 1, 3-6,
10, 11, 13-15, and 18-22 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Appellants seek
rehearing as to the portion of the Decision affirming the rejections under
Appeal2013-002291
Application 12/629,337
35 U.S.C. §§ 102(b) and 103(a). We vacate the portion of the original
Decision addressing the rejections under 35 U.S.C. §§ 102(b) and 103(a) and
substitute the following decision in its place. As a result of this rehearing,
we reverse the Examiner's rejections of claims 1, 3-6, and 10 under
35 U.S.C. § 102(b) and of claims 11, 13-15, and 18-22 under 35 U.S.C.
§ 103(a).
DISCUSSION
Appellants assert that we have overlooked their argument made in the
Reply Brief that Nagashima's Figure 6 fails to disclose claim l's "body" and
"core blocked by the body." Request 3 (citing Reply Br. 7).
In the Reply Brief, Appellants argued that
spring 75 is used in a completely distinct embodiment that cannot
be swapped into the previously-applied embodiments of FIGS. 4
and 5 under anticipation. See Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (elements from
different embodiments in a reference cannot be combined to
meet a claim under § 102). To the degree that the Examiner
alleges that the embodiments are the same, the Examiner errs.
The embodiment of FIG. 6 uses a spring with an opposite bias,
uses a different and more powerful solenoid, lacks a locking
mechanism, requires an apparently moveable spring retainer 74
at an opposite end of the spring, and does not describe any
blocking body for the same or any core or accumulator as in the
applied embodiments.
Reply Br. 7 (citing Nagashima, Fig. 6; col. 6., 1. 33-col. 7, 1. 12) (emphasis
added). We understood this argument to be directed to the differences
between the embodiments shown in Nagashima's Figures 4 and 5 and the
embodiment shown in Figure 6, and not to differences between the
embodiment shown in Figure 6 and the claimed invention. Thus, we
2
Appeal2013-002291
Application 12/629,337
addressed this argument by explaining that "Appellants' argument is not
responsive to the rejection as articulated by the Examiner. The rejection no
longer relies on the embodiments shown in Figures 4 and 5 and does not
propose to combine elements from the embodiments of Figures 4 and 6 to
meet the claim." Decision 8. Accordingly, we did not overlook Appellants'
argument.
However, to the extent that Appellants were arguing in the Reply
Brief that the embodiment ofNagashima's Figure 6 as used in the system of
Figure 1 does not disclose the claimed "body" and "core blocked by the
body," we misconstrued Appellants' argument. We grant rehearing to
reconsider Appellants' argument, as clarified in the Request for Rehearing.
First, we note that although it is not labeled in Figure 6, Nagashima's
cylinder 17, which the Examiner identifies as corresponding to the claimed
body, is shown in partial cross-section in Figure 6. See Nagashima, Fig. 6.
We further note that Nagashima's plunger rod 72 appears to have a wider
portion -again not labeled- which could fairly be construed as a core.
However, Appellants are correct that the Examiner never explicitly
identified the core or explained how it was blocked by the body. See
Request 3. It is not readily apparent from the disclosure in Nagashima that
the assumed core (i.e., the enlarged portion of plunger rod 72) would be
blocked by the body. Thus, any finding that Nagashima's embodiment
shown in Figure 6 includes "a core blocked by the body" as required by
claims 1 and 11, would be speculative. Appeal Br. 20, 23.
For this reason, we do not sustain the Examiner's decision rejecting
claims 1, 3-6, and 10 as anticipated by N agashima. For the same reason, we
do not sustain the Examiner's decision rejecting claims 11, 13-15, and 18-
3
Appeal2013-002291
Application 12/629,337
22 as unpatentable over Nagashima in view of Applicant's Admitted Prior
Art.
DECISION
We grant Appellants' Request for Rehearing. Accordingly, we
modify our original Decision in light of the Request and REVERSE the
Examiner's rejection of claims 1, 3-6, and 10 under 35 U.S.C. § 102(b) and
REVERSE the Examiner's rejection of claims 11, 13-15, and 18-22 under
35 U.S.C. § 103(a).
GRANTED; REVERSED
4