2018006243 (P.T.A.B. Jun. 25, 2020)

Lander, Kirt

Patent Trials and Appeals BoardJun 25, 2020

2018006243 (P.T.A.B. Jun. 25, 2020)

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. 13/621,199 09/15/2012 Kirt Lander PHDL1526-007 7438 26948 7590 06/25/2020 VENJURIS, P.C. 1938 E. OSBORN RD PHOENIX, AZ 85016-7234 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 06/25/2020 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): docketing@venjuris.com vclmdocket@venjuris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KIRT LANDER ____________ Appeal 2018-006243 Application 13/621,199 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, BRANDON J. WARNER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Pursuant to 37 C.F.R. § 41.52(a), Appellant1 filed a Request for Rehearing on May 29, 2020 (“Req. Reh’g”) seeking reconsideration of our Decision on Appeal dated April 1, 2020 (“Dec.”). We have jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b). Except for any portion specifically withdrawn on rehearing, this Decision on Request for Rehearing incorporates the Decision on Appeal, including any abbreviations defined 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2018-006243 Application 13/621,199 2 therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). A request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in rendering its Decision. 37 C.F.R. § 41.52(a)(1). The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. In the Request, Appellant asserts, with respect to independent claims 1 and 16, and claims 2–5 and 17–20 depending therefrom, that the Board’s Decision is not based on proper evidentiary requirements and that Halsey teaches away from claims 1 and 16. Req. Reh’g 2–5. Appellant argues that because “the Board was apprised that the Examiner never set forth a prima facie case of obviousness of claims 1 and 16[,] . . . the Board’s ruling is in error.” Req. Reh’g 2. In particular, Appellant submits that “the Examiner did not prove a prima facie case of obviousness that the leather band B of Halsey in view of Munsey meets the limitations of claims 1 and 16.” Id. at 3. Appellant characterizes the Examiner’s finding that Halsey’s leather strap B moves forward and upward relative to plate A after coupling when the coupling mechanism is under tension, as claimed, as “an improper ‘common knowledge’ type of argument without evidentiary support in the record.” Id. Appellant argues that the Examiner’s finding is contrary to the requirements of the MPEP, which states that “‘[o]fficial notice unsupported by documentary evidence should Appeal 2018-006243 Application 13/621,199 3 only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.” Id. (citing MPEP § 2144.03). Appellant also submits that “[t]he Board did not present any evidence to rebut the argument that the Halsey reference explicitly discloses that the plate is firmly held to the hoof after fastening,” but rather, “relied on the Examiner’s conclusory unsupported assertions.” Id. Appellant concludes that the Board’s Decision is based on “[a] misinterpretation of the teachings of Halsey (a misinterpretation of fact).” Id. To the extent that our Decision could have been more explicit with respect to whether the Examiner stated a prima facie case of obviousness, we note that as persons of scientific competence in the fields in which they work, examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons, and that absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Here, as discussed in the Decision, a preponderance of the evidence supports the Examiner’s finding that a person of ordinary skill in the art would understand that Halsey’s leather strap B would move to some extent forward and upward relative to plate A after coupling when straps d, d’, e, e’, f, h are collectively under some tension via Halsey’s buckles, loop, calks, and lugs a, b, c (as the claims broadly require), and in view of varying hoof sizes and buckling apertures in the straps. Dec. Appeal 2018-006243 Application 13/621,199 4 11–12. Our Decision was made in view of Halsey’s disclosure that “this method of fastening holds [metal plate A] firmly to the hoof,” which we do not understand to mean that all upward and forward movement of leather strap B relative metal plate A is eliminated, as Appellant suggests. Halsey 2:22–25; Dec. 12 (finding that a preponderance of the evidence supports a finding of “some play” in the fastening system of Halsey). Thus, the Examiner stated a prima facie case of obviousness, without relying on official notice. Regarding Appellant’s argument that Halsey teaches away from claims 1 and 16, we understand that Appellant is reiterating an argument from the Reply Brief, wherein Appellant is not contending that Halsey teaches away from the Examiner’s proposed modification of Halsey, in view of Munsey’s disclosure that a base may include a bottom that covers the entire bottom surface of the hoof; rather, Appellant is contending that Halsey teaches away from the Examiner’s finding that a person of ordinary skill in the art would appreciate from Halsey that there is some play that allows upward and forward movement of the leather strap B relative to metal plate A after coupling and applying some tension to straps d, d’, e, e’, f, as discussed supra. See Reply Br. 7 (“Halsey thoroughly explains that movement of the device is unwanted after fastening to the hoof, thereby teaching away from Appellant’s claims and invention” (emphasis added)). For the reasons discussed supra, and in the Decision, we are not persuaded by this Argument, nor is a request for rehearing an opportunity to express Appeal 2018-006243 Application 13/621,199 5 disagreement with our Decision, whereas, here, Appellant has not set forth points believed to have been misapprehended in our Decision. Dec. 11–12. In conclusion, based on the foregoing, Appellant’s Request is denied with respect to making changes to the final disposition of the rejections therein. DECISION SUMMARY In summary: Outcome of the Decision on Rehearing:2 Claims Rejected 35 U.S.C. § Reference(s) Granted Denied 1, 5, 16, 20 103(a) Halsey, Munsey 1, 5, 16, 20 2, 17 103(a) Halsey, Munsey, Fox 2, 17 3, 18 103(a) Halsey, Munsey, Thurlow 3, 18 4, 19 103(a) Halsey, Munsey, Gilbert 4, 19 Overall Outcome 1–5, 16–20 Final Outcome on Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 6, 7, 9, 15 102(b) Dallmer 6, 7, 9, 15 6, 7, 9, 13– 15 102(b) Halsey 6, 7, 9, 13–15 8 103(a) Dallmer 8 10 103(a) Dallmer, Marquis 10 2 The Request for Rehearing only addressed independent claims 1 and 16, and the claims depending therefrom. Req. Reh’g 2. Appeal 2018-006243 Application 13/621,199 6 Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 11, 12 103(a) Dallmer, Faulk 11, 12 1, 5, 16, 20 103(a) Halsey, Munsey 1, 5, 16, 20 2, 17 103(a) Halsey, Munsey, Fox 2, 17 3, 18 103(a) Halsey, Munsey, Thurlow 3, 18 4, 19 103(a) Halsey, Munsey, Gilbert 4, 19 8 103(a) Halsey 8 10 103(a) Halsey, Fox 10 11 103(a) Halsey, Thurlow 11 12 103(a) Halsey, Gilbert 12 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED