Ex Parte Ruden et al

Patent Trials and Appeals Board

Sep 18, 2014

11865358 - (R) (P.T.A.B. Sep. 18, 2014)

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.
11/865,358 10/01/2007 Shawn Allen Ruden STL13230 5145
73462 7590 12/19/2014
Hall Estill Attorneys at Law
(Seagate Technology LLC)
100 North Broadway, Suite 2900
Oklahoma City, OK 73102-8820
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
12/19/2014 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 SHAWN ALLEN RUDEN and SABRINA LYNNE MURRAY
____________

Appeal 2012-005823
Application 11/865,358
Technology Center 3700
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

Shawn Allen Ruden and Sabrina Lynne Murray (Appellants) filed a
request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated
November 18, 2014, of our decision (hereinafter “Decision”) mailed
September 18, 2014. In the Decision, we affirmed the Examiner’s rejection
of claims 10, 11 and 14–17 under 35 U.S.C. § 103(a) over Whalen and
Christensen based on new rationale for affirmance that we identified as
NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Decision 7.
Appeal 2012-005823
Application 11/865,358

2
Appellants point out that the new rationale for affirmance was based
on our having found that the second embodiment of Whalen illustrates “an
alternative attachment where top cover 180 includes flap 182 that includes a
projection (unnumbered) for engagement with an opening (unnumbered) in
bottom cover 160. See Whalen, col. 5, 1. 23−col. 6, 1. 39.” Decision 5.
In the Request, Appellants argue that, “[t]he skilled artisan having
read Whalen ascertains that the Board’s stated view is a factual
misapprehension of what Whalen actually teaches. There is no opening
(alleged aperture) in the bottom of cover 160 for connecting with the top
cover.” Request 2. We agree with Appellants that Whalen fails to explicitly
disclose an opening in the bottom cover 160 as embodied in the figures
illustrating the second embodiment of Whalen.
Therefore, in view of Appellants’ contention, we grant the request and
vacate our decision to enter a new ground of rejection under 35 U.S.C.
§ 103(a) over Whalen and Christensen with respect to claims 10, 11 and 14–
17 pursuant to 37 C.F.R. § 41.50(b).
Accordingly, we modify our decision to that extent, and as such, the
Examiner’s decision to reject claims 10, 11 and 14–17 is also REVERSED.

GRANTED

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