Ex Parte Barth et al

Board of Patent Appeals and Interferences

Mar 28, 2012

11932170 (B.P.A.I. Mar. 28, 2012)

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.
11/932,170 10/31/2007 Roland Barth 3081.164US02 2109
24113 7590 03/28/2012
PATTERSON THUENTE CHRISTENSEN PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
SCHWARTZ, JORDAN MARC
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
03/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLAND BARTH, ROLAND BERGNER, LOTHAR MUELLER,
DIETMAR STEINMETZ, SIEGFRIED SCHUBERT,
KLAUS-DITMAR VOIGT, FRANK BEHRENDT,
BURKHARD DIETZEL, and AXEL DOERING
____________

Appeal 2010-006770
Application 11/932,170
Technology Center 2800
____________

Before DEBRA K. STEPHENS, DENISE M. POTHIER,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellants request rehearing under 37 C.F.R. § 41.52 (2011) of our
Decision of January 20, 2012, wherein we sustained the Examiner’s
rejection of the appealed claims 13-17 under 35 U.S.C. § 103(a).

ANALYSIS
Appellants contend that the Board’s affirmance of the Examiner’s
rejection of independent claim 13 and of the claims that depend from claim
13 raised a new ground of rejection (Req. Reh’g 2), and requests that the
alleged new ground be designated as such under 37 C.F.R. § 41.50(b).
Independent Claim 13
Appellants contend that the Board’s affirmance of the rejection of
claim 13, which construed recitations in the preamble as having no
patentable weight (Decision 3-4), amounted to a new ground of rejection
because the Examiner did not employ the same claim construction (Req.
Reh’g 3-4).
The Board need not recite and agree with the examiner’s
rejection in haec verba to avoid issuing a new ground of
rejection. “[T]he ultimate criterion of whether a rejection is
considered ‘new’ in a decision by the [B]oard is whether
[applicants] have had fair opportunity to react to the thrust of
the rejection.”
In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (quoting In re Kronig,
539 F.2d 1300, 1302–03 (CCPA 1976)) (brackets in original). “The thrust of
the Board’s rejection changes when . . . it finds facts not found by the
examiner regarding the differences between the prior art and the claimed
invention, and these facts are the principal evidence upon which the Board’s
rejection was based.” Id. at 1320. Appellants have not identified any
rationale or finding of fact regarding the differences between the prior art
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and claim 13 that were relied on by the Board in affirming the rejection of
claim 13 that were not discussed by the Examiner. Accordingly, Appellants
have not demonstrated that the thrust of the rejection was changed, and we
decline to designate our affirmance as a new ground of rejection.
Dependent Claim 14
Appellants contend that the Board’s affirmance of the rejection of
claim 14, explaining the legal standard for the teachings of references in an
obviousness analysis, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (Decision 5-6), amounted to a new ground of rejection (Req. Reh’g
4-5). However, as with claim 13, discussed supra, Appellants have not
identified any rationale or findings of fact regarding the differences between
the prior art and claim 14 that were relied on by the Board in affirming the
rejection of claim 14 that were not relied on by the Examiner. See Leithem,
661 F.3d at 1320. Nor do we find our discussion of KSR and its application
to Jolson and Capetan is the principal evidence upon which our affirmance
of the rejection was based. (See Decision 5-6). Regardless of interpretation
of the Examiner’s term “inherently,” we find it to be inherent that, with
respect to Jolson, formulas are stored in the computer, with respect to
Capetan, formulas are stored in the computer, and we determine one of
ordinary skill in the art would recognize or infer that calculations using
Jolson’s or Capetan’s computer would use formulas stored in a computer.
(See Ans. 4, 7). Accordingly, Appellants have not demonstrated that the
thrust of the rejection was changed, and we decline to designate our
affirmance as a new ground of rejection.
Appellants further assert that the Board has made an “error of law”
(Req. Reh’g 5). Appellants do not clearly indicate whether they are
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contending we erred in applying the doctrine of inherency, erred in failing to
apply the doctrine of inherency, or erred in looking to KSR, 550 U.S. at 418,
as clarifying the legal standard for the teachings of references in an
obviousness analysis. Nonetheless, we have reviewed our affirmance of the
rejection of claim 14 and find no error of law therein.
Dependent Claim 15
Appellants contend that the Board’s affirmance of the rejection of
claim 15, in which, as a matter of law, we construed the claim as not
“preclud[ing] the ‘combined device’ from utilizing both ultrasound and
optical electronic measuring structures” (Decision 7), amounted to a new
ground of rejection (Req. Reh’g 5-6). However, as with claims 13 and 14,
discussed supra, Appellants have not identified any rationale or finding of
fact regarding the differences between the prior art and claim 15 that were
relied on by the Board in affirming the rejection of claim 15 that were not
relied on by the Examiner. See Leithem, 661 F.3d at 1320. Therefore,
Appellants have not demonstrated that the thrust of the rejection was
changed.
Appellants contend that our findings of fact regarding the timeliness
of the Examiner’s comments in the Answer (see Ans. 7; Reply Br. 11;
Decision 8) amount to a new grounds of rejection by presenting additional
facts that changes the thrust of the rejection (Req. Reh’g 6). It is unclear to
us exactly to what new facts in our Opinion Appellants refer that change the
thrust of the rejection. In other words, it is unclear whether Appellants
contend the Examiner’s comments in the Answer (Ans. 7) amounted to new
grounds, or whether our findings (Decision 8) regarding the procedural fact
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that Appellants had taken the opportunity to respond to those comments
(Reply Br. 11) amounted to new grounds.
We note that if Appellants viewed the Examiner’s comments in the
Answer as an undesignated new ground of rejection, as they now seem to
allege, such an issue is a petitionable matter under 37 C.F.R. § 1.181 and
addressable by a timely filed petition -- not on appeal. See also MPEP §§
1002, 1201 (8th ed., Rev. 8, July 2010). Also, to the extent Appellants are
arguing that our claim construction (Decision 7) amounted to a new ground
(see Req. Reh’g 6), Appellants have not identified any rationale or finding of
fact regarding the differences between the prior art and claim 15 that were
relied on by the Board in affirming the rejection of claim 15 that were not
relied on by the Examiner, see Leithem, 661 F.3d at 1320. Accordingly,
Appellants have not demonstrated that the thrust of the rejection was
changed.
For the foregoing reasons we decline to designate our affirmance as a
new ground of rejection.

CONCLUSION
We have reconsidered the Decision of January 20, 2012, in light of
Appellants’ comments in the Request, and we have granted Appellants’
Request to the extent that we have reviewed our Decision and considered the
arguments made in the Request. We have found no errors in our previous
Decision. We, therefore, deny Appellants’ Request for Rehearing in that we
decline to make any change in the Decision.

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ORDER
The Request for Rehearing is denied.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REHEARING DENIED

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