13065227 - (D) (P.T.A.B. Jun. 17, 2019)

Ex Parte Wegner et al

Patent Trials and Appeals BoardJun 17, 2019

13065227 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/065,227 03/17/2011 2387 7590 06/19/2019 Olson & Cepuritis, LTD. 20 NORTH WACKER DRIVE 36THFLOOR CHICAGO, IL 60606 FIRST NAMED INVENTOR Kenneth E. Wegner 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. JLS-110 7407 EXAMINER FERRERO, EDUARDO R ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 06/19/2019 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): docket@olsonip.com firm@olsonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH E. WEGNER, ANTHONY SIMON RICHARDS, and ANDREW J. RUSH Appeal2017-007493 Application 13/065,227 Technology Center 3700 Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and GEORGE R. HOSKINS, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing under 37 C.F.R. Â§ 41.52 (hereinafter "Request" or "Req.") of our Decision mailed March 8, 2019 (hereinafter "Decision" or "Dec."). In the Decision, we affirmed the Examiner's rejection of claims 15 and 16 under 35 U.S.C. Â§ 103(a) based on the combined teachings of Kopp '0471, Center2, Kopp '5403, Maloney4, 1 US 3,391,047, issued July 2, 1968. 2 US 5,235,794, issued Aug. 17, 1993. 3 US 4,603,540, issued Aug. 5, 1986. 4 US 4,631,905, issued Dec. 30, 1986. Appeal2017-007493 Application 13/065,227 Gaylor5, and Sandolo6. Dec. 7. We reversed all other rejections involved in the appeal. Id. DISCUSSION Appellants request rehearing of our Decision affirming the Examiner's rejection of claims 15 and 16 noted above. Req. 1-5. A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. Â§ 41.52. "The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board," and, generally, "[a]rguments not raised, and Evidence not previously relied upon, pursuant toÂ§Â§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing." 37 C.F.R. Â§ 4I.52(a)(l). Appellants set forth three bases for reconsideration in the Request. First, Appellants contend that "[t]he holding that '[]there is no requirement that the references provide a suggestion or motivation for the proposed modification' overlooks the criteria for determination of obviousness established by KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 418- 419 (2007)." Req. 1. Second, Appellants contend that "[t]he record is devoid of any evidentiary finding why one of ordinary skill in the art would have been motivated to modify Kopp '047, the primary reference, as contended by the Examiner." Id. Third, Appellants contend that "[t]he record is devoid of any evidentiary finding that supports the Examiner's reason" to "modif[y] Kopp '047's transverse heat sealing device." Id. at 2. Appellants do not contend that we overlooked or misapprehended any 5 US 5,466,474, issued Nov. 14, 1995. 6 US 5,361,560, issued Nov. 8, 1994. 2 Appeal2017-007493 Application 13/065,227 particular argument made on appeal. Rather, Appellants contend that we misunderstood and, therefore, misapplied the law related to obviousness. We disagree. Appellants' position requires that the references, themselves, provide an express suggestion or motivation for a proposed combination of teachings from the references. Again, we disagree. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." KSR v. Teleflex, 550 U.S. at 419. Appellants also allege that the Examiner's rationale lacks support. However, the Examiner's rationale is well-founded. As explained in our Decision, Appellants do not dispute any finding made by the Examiner with respect to this rejection. See Dec. 5 ( citing Appeal Br. 8-10). Appellants do not dispute the Examiner's finding that Kopp '04 7' s ribs 7 form a sachet of fixed length due to their location on roller-shaped welding clamps (i.e., on the circular welding jaws). See, e.g., Final Act. 5 ( discussing the periphery of the rolls limiting sachet length). Instead, Appellants acknowledge that in order to vary sachet length, Kopp '04 7 would need to change its machine for each variation of sachet length desired (i.e., circular welding jaws of different diameters would be required). See, e.g., Appeal Br. 9 ("[I]f one of ordinary skill wished to make longer packages, all he/she had to do was to increase the outside diameter of the circular welding jaws."). Appellants also do not dispute the Examiner's finding that the additional references cited by the Examiner teach separate heat seal and cutting devices that make sachet length independent of roll geometry. See Final Act. 5 (the additional references "all teach a transverse 3 Appeal2017-007493 Application 13/065,227 heat sealing cutting devices adapted to fuse together portions of the membrane sheet and the outer film sheets mounted to the frame placed below the heating seal rolls ... to be able to make packages longer than the periphery of the rolls"). The Examiner's rationale, which is the subject of this Request, simply applies the teachings of the additional references to accommodate any desired variation in sachet length without requiring a different machine for each desired length. Based on the record before us, we see no error in the Examiner's rationale or the underlying fact findings supporting that rationale, which were the basis for our Decision. Rather, Appellants disagree with the outcome in our Decision. After review of the Request, we are not apprised of anything that was misapprehended or overlooked that requires modification of our Decision. DECISION We grant the Request to the extent that we have considered the arguments, but otherwise deny the Request. DENIED 4