Ex Parte Arnold et al

Patent Trial and Appeal Board

Jun 20, 2017

11946653 (P.T.A.B. Jun. 20, 2017)

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.
11/946,653 11/28/2007 Steven Don Arnold H0017206 9566
93136 7590 06/22/2017
HONEYWETI ,/PANGRT E
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
BOBISH, CHRISTOPHER S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
patentservices-us @ honey well, com
brian@ppbdlaw.com
sherry, vallabh @honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN DON ARNOLD, PETER DAVIES,
BAPTISTE SZCZYRBA, DAMIEN MARSAL,
and THOMAS DELTOMBES
Appeal 2015-006312
Application 11/946,653
Technology Center 3700
Before LINDA E. HORNER, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2015-006312
Application 11/946,653
STATEMENT OF THE CASE
On May 29, 2017, Appellants, Steven Don Arnold et al.,1 filed a
Request for Rehearing (“Request”) of our Decision on Appeal of March 29,
2017 (“Decision”), in which we affirmed the rejections of claims 7, 11, 12,
14, and 16. We have reviewed the Decision in light of Appellants’
arguments but, for the reasons given below, we decline to change the
Decision.
DISCUSSION
A “request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board (“Board”)].” See 37 C.F.R. § 41.52(a)(1). Arguments not
raised in the briefs before the Board and evidence not previously relied upon
in the briefs “are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) through (a)(4) of this section.” Id. Also, a
request for rehearing is not an opportunity to merely express disagreement
with a decision without setting forth points believed to have been
misapprehended or overlooked. 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
35U.S.C. §§ 141, 145.
With respect to the rejection of independent claim 7, Appellants
contend that the Board erred for three reasons. First, Appellants contend
that the “Board failed to adequately characterize and address evidence in
1 Appellants identify Honeywell International Inc. as the real party in
interest. Appeal Brief, dated November 21, 2014, at 2 (“Appeal Br.”).
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Appeal 2015-006312
Application 11/946,653
Bergeron as to significant differences between the turbocharger of FIG. 1
and the turbochargers of the instant application.” Request 2; see id. at 4—6.
“Appellants] characterized some of those significant differences as
‘inoperability’.” Id. at 2. According to Appellants, “the Board’s reasoning
presumes operability and relies on an unsupported conclusion as to how the
assembly of Bergeron can be modified to be manufactured and operable
without due consideration of the evidence in Bergeron itself, which
demonstrates inoperability” {id. at 4), and “Appellant pointed to objective
evidence in Bergeron as to operation of its turbocharger that differs
significantly from the operation of turbochargers of the instant application.
Such objective evidence in Bergeron itself cannot be ignored and is not
‘unsupported attorney argument’” {id. at 5).
In our Decision, we relied on the well-established principle that prior
art patents are presumed to be operable. Decision 4 (citing In re Sasse, 629
F.2d 675, 681 (CCPA 1980)). The court in Sasse explained the shifting
burdens of proof on the issue of whether a § 102(b) reference is an enabling
disclosure. Sasse, 629 F.2d at 681. Specifically, the court explained that
“when the PTO cited a disclosure which expressly anticipated the present
invention . . . the burden was shifted to the applicant ... to rebut the
presumption of the operability of [the reference] by a preponderance of the
evidence.” Id. In our Decision, we determined that unsupported attorney
assertions presented in Appellants’ Appeal Brief contending that Bergeron’s
figures and cutaway views are ambiguous and show an inoperable
turbocharger do not satisfy Appellants’ burden of proof to rebut the
presumption of operability. Decision 4.
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Appeal 2015-006312
Application 11/946,653
Appellants contend that they met their burden of proof by pointing to
“objective evidence in Bergeron as to operation of its turbocharger” and that
this objective evidence “is not ‘unsupported attorney argument’.”
Request 5. Our reference to “unsupported attorney argument” in our
Decision did not end our analysis. We further weighed the arguments and
relevant disclosure in Bergeron under the preponderance of the evidence
standard and explained in our Decision why Appellants’ argument that
Bergeron discloses an inoperable turbocharger was not persuasive. Decision
3—4. Thus, the Board did not overlook or misapprehend Appellants’
arguments; the Board found the arguments unpersuasive because Bergeron
discloses all of the limitations in independent claim 7 and dependent claim
14. See, e.g., Decision 3^4.
Second, Appellants argue that the Board erred in finding that
Bergeron disclosed “a through bore that comprises a turbine end opening
that receives the ball bearing cartridge and shaft subassembly as an
assembled balanced unit,” as recited in claim 7. Request 3; see id. at 6—7.
According to Appellants, the Board “misapprehends the transitive verb
‘receives’ and three corresponding nouns [i.e., through bore, assembled
balance unit, turbine end opening] in independent claim 7. In so doing, the
Board sets forth an unreasonable construction of independent claim 7, i.e., a
construction that neither comports with plain meaning nor the specification.”
Request 3. Appellants assert that “[t]here is no ambiguity in that the through
bore [42] receives the assembled balanced unit [14, 16] from the turbine end
opening.” Request 7. Contrary to Appellants’argument, Appellants’
proposed definition of “receive” — “to act as a receptacle or container for”
(Request 7) — is consistent with the Board’s finding that
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Appeal 2015-006312
Application 11/946,653
FIG. 1 of Bergeron shows the shaft and bearing assembly (14,
16) received within the opening and bore 42 of the housing 12.
The right hand side of the shaft 14 by seal 40 and the extension
of the shaft 14 that extends into the turbine are clearly received
by the bore and opening as they are shown in FIG. 1.
Decision 4 (citing Adv. Act. 2; Ans. 3); see also Decision 5 (“Bergeron’s
bore 42 receives the shaft and bearing in an assembled and balanced state.”).
The Board did not overlook or misapprehend Appellants’ argument, but
found it unpersuasive.
Finally, Appellants argue that the Board erred in finding that
“Bergeron’s bore 42 receives the shaft and bearing in an assembled and
balanced state.” Request 7—8 (citing Decision 5); see Request 7—9. In
particular, Appellants argue “[t]he Board has misapprehended evidence in
FIG. 1 of Bergeron, which clearly shows separate unitary components as
being joined by bolts.” Id. at 9. Appellants presented, and the Board
considered, this same argument as to the disclosure of Figure 1 in
Appellants’ Appeal Brief. Appeal Br. 8-9. The Board did not overlook or
misapprehend Appellants’ argument, but, as discussed above with respect to
Appellants’ second argument, found it unpersuasive. Appellants are merely
rehashing arguments already made and rejected.
With respect to the rejections of claims 11, 12, 14, and 16, which
depend from independent claim 7, Appellants request rehearing for the same
reasons as claim 7. For the same reasons discussed with respect to claim 7,
the Board did not overlook or misapprehend Appellants’ arguments.
For the reasons discussed above, Appellants’ Request does not
persuade us that the original Decision misapprehended or overlooked any
matter or that we erred in affirming the Examiner’s rejections of claims 7,
11, 12, 14, and 16.
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Appeal 2015-006312
Application 11/946,653
DECISION
Appellants’ Request for Rehearing is granted to the extent that we
reconsidered the Decision. It is denied with respect to making any changes
to the Decision. The Examiner’s rejections of claims 7, 11, 12, 14, and 16
remain AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
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