Ex Parte 6919122 et al

Board of Patent Appeals and Interferences

Sep 7, 2010

90008001 (B.P.A.I. Sep. 7, 2010)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Saint-Gobain Performance Plastics Corp.,
Appellant and Patent Owner
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Appeal 2009-004255
Reexamination Control 90/008,001
Patent 6,919,122 B2
Technology Center 3900
____________

Before SALLY GARDNER LANE, ROMULO H. DELMENDO, and KEN
B. BARRETT, Administrative Patent Judges.

LANE, Administrative Patent Judge

DECISION ON REHEARING

Appeal 2009-004255
Application 90/008,001

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I. STATEMENT OF THE CASE
Appellant has requested rehearing under 37 C.F.R. § 41.52 of our
Decision on Appeal (“Decision”) regarding claim 26.
We do not modify our opinion.
II. ANALYSIS
Appellant’s claim 1 recites:
A flexible belt comprising:
a reinforcement material having two faces;
a coating disposed over a first face of the two faces and a
coating disposed over a second face of the two faces;
a multiplicity of ribs raised above the first face of the
reinforcement material, the multiplicity of ribs configured to
impart lateral force to objects carried by the belt; and
a multiplicity of ribs raised above the second face of the
reinforcement material;
wherein the ribs raised above the first face are raised
above the first face by about 0.02 inches to about 0.05 inches.

(App. Br. 38, Claims App’x). Appellant’s claim 26 recites:
The flexible belt of claim 1, wherein the ribs are
independent of the reinforcement material and each rib is
separated from another rib by a distance of coating that is
greater than the height of each rib.

(App. Br. 42, Claims App’x),
Appellant argues that we incorrectly referred to Gilbert as teaching
particles spaced at “approximately 2000 per square inch” instead of
“approximately 2000 per square centimeter” on page 11 of our Decision.
(Request at 2). According to Appellant, this error led to the incorrect
decision that the combination of Gilbert, Dalal, and Habeggar teaches a
flexible belt with a multiplicity of ribs, “wherein . . . each rib is separated
Appeal 2009-004255
Application 90/008,001

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from another rib by a distance of coating that is greater than the height of
each rib.” (App. Br. 42, Claims App’x).
We agree with Appellant that Gilbert teaches a particle density of
“approximately 2000 per square centimeter” instead of “square inch.” (See
Gilbert col. 4, ll. 57-58). But, Appellant was aware of the correct teaching
of Gilbert before our Decision was issued and chose not to argue in either
the Brief on Appeal or Reply Brief that Gilbert fails to teach a particle
density within the scope of the spacing recited in claim 26. (See Decision at
11: “Appellant does not dispute that the spacing of the particles is within the
scope of the spacing recited in Claim 26.”) Instead, Appellant argued only
that Gilbert teaches particles, not ribs separated in the claimed proportion.
(See App. Br. 19; Reply Br. 5). “Arguments not raised in the briefs before
the Board and evidence not previously relied upon in the brief and any reply
brief(s) are not permitted in the request for rehearing except [those regarding
recent relevant Board or Federal Circuit decisions and new grounds of
rejection].” 37 C.F.R. § 41.52(a)(1). Thus, we do not now consider
Appellant’s argument that Gilbert fails to teach particles within the claimed
spacing.
Appellant also argues that those of skill in the art would not have
modified the spacing of ribs on a conveyor belt, given Gilbert’s teaching of
particles of the recited density. (Request at 3-4). We addressed this
argument in our Decision, noting that Gilbert also teaches a belt with ribs, in
addition to a belt with particles, and that under KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), a determination of obviousness can take into
account “inferences and creative steps that person of ordinary skill in the art
would employ.”
Appeal 2009-004255
Application 90/008,001

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Accordingly, we are not persuaded that our Decision should be
modified.
III. ORDER
Upon consideration of the Request for Rehearing and for reasons
given, it is ordered that the decision affirming the rejection of claim 26
under 35 U.S.C. § 103(a) as being rendered obvious by Gilbert, Dalal, and
Habegger shall not be not modified.

REHEARING DENIED

KMF

cc:

Jason E. Pauls
Foley & Lardner
777 East Wisconsin Ave., Suite 3800
Milwaukee, WI 53202

Mark D. Swanson
Pauley, Peterson & Erickson
2800 West Higgins Road, Suite 365
Hoffman Estates, IL 60195