Ex Parte Berger

Patent Trial and Appeal Board

Mar 27, 2013

10822079 (P.T.A.B. Mar. 27, 2013)

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.
10/822,079 04/12/2004 Allen Berger JR. 240061 2185
7590 03/27/2013
Sanchelima and Associates, P.A.
Jesus Sanchelima, Esq.
235 S.W. Le Jeune Rd.
Miami, FL 33134
EXAMINER
JOHNSON, BLAIR M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
03/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALLEN BERGER, JR.
____________

Appeal 2012-011456
Application 10/822,079
Technology Center 3600
____________

Before GAY ANN SPAHN, BRETT C. MARTIN, and
RICHARD E. RICE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Allen Berger, Jr. (Appellant) filed a Request for Rehearing under
37 C.F.R. § 41.52 (hereinafter “Request”), dated January 17, 2013, of our
decision mailed November 28, 2012 (hereinafter “Decision”). In that
Decision, we affirmed the Examiner’s rejections of: (1) claims 1 and 2
under 35 U.S.C. § 102(b) as anticipated by Leist (US 5,555,923, issued Sep.
17, 1996) (Decision 3-7); (2) claims 1 and 2 under 35 U.S.C. § 102(b) as
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anticipated by Berger (US 6,062,293, issued May 16, 2000) (Decision 8-9);
(3) claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Berger and
Leist (Decision 9-11); (4) claim 4 under 35 U.S.C. § 103(a) as unpatentable
over either Leist alone or the combination of Berger and Leist, and Clark
(US 2,738,839, issued Mar. 20, 1956) (Decision 11); and (5) claims 2-4
under 35 U.S.C. § 103(a) as unpatentable over Berger (Decision 12-13). In
that Decision, we also reconsidered the issue of obviousness anew by
carefully weighing the evidence for obviousness with respect to the evidence
against obviousness, and we were not persuaded of the nonobviousness of
claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Berger and Leist
based upon Appellant’s arguments with respect to the secondary
considerations of unexpected results and commercial success (Decision 13-
16).
Rehearing is limited to matters overlooked or misapprehended by the
Board in rendering the initial decision. See 37 C.F.R. § 41.52(a)(1).

OPINION
On the bottom of page 1 of the Request, Appellant states that “[f]or
the following reasons, [Appellant] believes that the Board misapprehended
or overlooked the following rejection points.” Thus, Appellant’s arguments
on pages 2-9 of the Request will be treated as if Appellant is arguing that the
Board misapprehended or overlooked each of the particular arguments set
forth, even though no further mention of misapprehending or overlooking is
made.

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Rejection (1) – Anticipation based on Leist
Appellant argues this panel misapprehended or overlooked that in
claim 1, “the location of the reinforcement member is specified, namely, the
member has to be ‘within’ the ends which in turn are defined in the
preamble of the Jepson claim as being defined by the ‘reversely folded’ edge
portions” and “[t]herefore, the distance is an ascertainable zero because the
reinforcement is required to be ‘within’ the reversely folded member.”
Request 2. Appellant also argues this panel misapprehended or overlooked
that Leist does not show “the reinforcement member comes in abutting
longitudinal contact with the reversely folded edge portions . . . from
‘within’ the reversely folded edge portions.” Id.
We are not persuaded by Appellant’s arguments that we
misapprehended or overlooked the location of Leist’s reinforcement member
32. Appellant’s claim 1 recites “adjacent panels having reversely folded
edge portions with complementing joints defining said top end and said
bottom end” and “a plurality of longitudinal unitary reinforcement members
insertable horizontally and interiorly within said top and bottom ends . . .
and having conforming longitudinal portions coming in abutting longitudinal
contact with said reversely folded edge portions.” App. Br., Clms. App’x.
Emphasis added. Claim 1’s recitation that a plurality of reinforcement
members are “insertable” horizontally and interiorly within said top and
bottom ends is not reciting that the reinforcement member is within the top
and bottom ends, but rather only that the reinforcement members are capable
of being inserted within the top and bottom ends because “insertable” is
reciting intended use or intended assembly. App. Br., Clms. App’x.
Emphasis added. See also, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
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1997) (citations omitted) (“It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.”). Leist discloses reinforcement members 32 which are capable
of being inserted within the top and bottom ends (tubular portions 34, 36) as
interpreted by the Examiner.
Appellant appears to be arguing that Leist’s tubular portions 34, 36
cannot constitute top and bottom ends and reversely folded edge portions
because the entirety of the tubular portions 34, 36 are not at the extreme end
or edge of the panel. However, we note that Appellant’s top and bottom
ends 24, 26 and reversely folded edge portions require the inclusion of
longitudinally extending inner walls 28, 29 in order to keep the
reinforcement members 50, 60 within the ends or edges; and the
longitudinally extending inner walls 28, 29 are not located at the extreme
end or edge, but are a distance away from the extreme end or edge.
Appellant’s Specification fails to define how far away from the extreme end
or edge the longitudinally extending inner walls 28, 29 can extend, but still
be considered a part of the top and bottom ends and the reversely folded
edge portions. Thus, similarly to Appellant’s longitudinally extending inner
walls 28, 29 being a part of the ends or edges, Leist’s tubular portions 34, 36
may be considered to constitute the ends and reversely folded edge portions,
particularly since Appellant’s Specification suggests no way to determine
how far back from the extreme ends or edges the ends and reversely folded
edge portions can be and still be considered to be part of the ends and
reversely folded edge portions.
Claim 1 recites that the reinforcement members have “conforming
longitudinal portions coming in abutting longitudinal contact with said
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reversely folded edge portions.” App. Br., Clms. App’x. This panel fully
appreciated that “Figure 4 of Leist illustrates that the conforming
longitudinal portions of the connecting bar 32 come in abutting longitudinal
contact with the reversely folded edge portions in order to satisfy the
language of claim 1.” See Decision 4. Indeed, Leist’s reinforcement
members 32 have two very short walls connected to two very long walls
which in turn are connected to each other by another wall of a length
between the length of the very short walls and the length of the very long
walls. It is the very short walls that the Examiner found to be the
conforming longitudinal portions and these very short walls come into
abutting longitudinal contact with the walls of Leist’s reversely folded edge
portions (tubular portions 34, 36).
Appellant also argues this panel misapprehended or overlooked that
Leist’s “[r]einforcement member 32 does not touch female member 68 at
all,” and if it is the case that the Examiner is not relying on the conformance
of the female joint member 68, “then there is no conformance to the
reversely folded edge portion which is what female joint member 68
represents,” because “tubular inner portions 34, 36 are not the ‘reversely
folded edge portions.’” Request 2-3. We are not persuaded that we
misapprehended or overlooked that Leist’s “[r]einforcement member 32
does not touch female member 68,” and the conformance to the reversely
folded edge portion. We simply disagree with Appellant’s interpretation of
the Examiner’s rejection because as we stated, “[t]he Examiner is not relying
on the conformance of the male joint member 66 and the female joint
member 68 [in Leist], but rather the conformance of the straight portions of
the connecting bar 32 with the tubular inner portions 34, 36, of subpanel 14a
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as shown in Leist’s Figure 3.” Decision 5. Indeed, the Examiner found that
Leist’s tubular portions 34, 36 constituted the ends having the reversely
folded edge portions. Therefore, according to the Examiner’s rejection, the
very short walls of the reinforcement member 32 conform to a flat, straight
portion of the tubular portions 34, 36, and this meets the claim language.
Ans. 4-5. Although Appellant argues that tubular portions 34, 36 are not
reversely folded edge portions, we note that the Examiner found “reversely
folded” to be a product-by-process limitation that was not afforded any
patentable weight in an article of manufacture claim. Ans. 5.
We note that Appellant’s Specification does not set forth any
particular definition for the claim term “reversely folded edge portions.”
However, Appellant’s Specification does state that “[t]he reversely folded
edge portions form upper longitudinal ends 24 and lower longitudinal ends
26.” Spec. 5, ll. 13-14. The Specification also states that “upper
longitudinal end 24 includes longitudinally extending upper wall 25 with
longitudinal tongue 32 and longitudinally extending inner wall 29
perpendicularly extending from upper wall 25,” and “[l]ower longitudinal
end 26 includes longitudinally extending bottom wall 27 with longitudinally
extending groove 42 and longitudinally extending inner wall 28
perpendicularly extending from bottom wall 27.” Spec. 5, ll. 18-23. Thus,
although it is not clear what the difference is between the reversely folded
edge portions and the upper and lower longitudinal ends 24, 26, it is clear
that both the reversely folded edge portions and the upper and lower
longitudinal ends 24, 26 are not just at the extreme edge or end because both
include longitudinally extending inner walls 28, 29 which extend
perpendicularly backwardly from the extreme edge or end. Accordingly,
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just as Appellant’s reversely folded edge portions and upper and lower
longitudinal ends 24, 26 include structure, i.e., longitudinally extending
inner walls 28, 29, extending backwardly from the extreme end or edge,
Leist’s reversely folded edge portions (tubular portions 34, 36) have
structure extending backwardly form the extreme end or edge.
Appellant also argues this panel misapprehended or overlooked that
“[t]he abutting contact of Leist’s member 32 with a tubular portion 34 or 36
does not aid in strengthening the articulations of the panels.” Request 3.
We are not persuaded by Appellant’s argument that we misapprehended or
overlooked Leist’s abutting contact of member 32 with tubular portions 34,
36 fails to aid in strengthening the articulations of the panels. Appellant’s
argument is not commensurate with the scope of independent claim 1.
Claim 1’s language does not recite that the reversely folded edge portions
aid in strengthening the articulations of the panels.
Appellant also argues that this panel misapprehended or overlooked
that Leist’s “reduced portion 38 (about 8 inches) does not satisfy the
limitations of claims 1 and 2 since it is not continuous from one lateral end
to the other and much less of contiguous panels.” Request 3. Appellant also
argues that the “interrupted pieces do not provide the structural integrity
provided with [Appellant’s] continuous uninterrupted reinforcement
members.” Id. We are not persuaded by Appellant’s arguments that we
misapprehended or overlooked the continuity or contiguousness of Leist’s
reduced portion 38. We note that claim 1 does not recite the reinforcement
member being continuous or contiguous. Rather, claim 1 recites that the
reinforcement members are insertable horizontally and interiorly within said
top and bottom ends from one lateral end thereof to the other lateral end
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uninterrupted. The recitation of “insertable” is a recitation of intended use
of the reinforcement members and thus, the reinforcement members only
need be capable of being inserted within the top and bottom ends of the
panels from one lateral end to the other lateral end uninterrupted. In Leist,
the reinforcement member 32 is capable of being inserted into the tubular
portions 34, 36 of the subpanel 14a so as to be capable of extending from
one lateral end to the other lateral end uninterrupted.
Accordingly, for the reasons discussed supra, the arguments in
Appellant’s Request do not persuade us that we erred in affirming the
Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Leist.
Rejection (2) – Anticipation based on Berger
Appellant argues this panel misapprehended or overlooked that
Berger’s reinforcement members (tongue bar 40, groove bar 41) “have
longitudinal portions that are not conforming to the reversely folded edge
portions,” but rather “members 40 and 41 in Berger were merely ‘dropped in
place or raised in place and secured thereto by a commercial adhesive’” so
that “[i]t is clear from figures 3 and 4 that there is no indication of making
the reinforcement portions to ‘conform.’” Request 3-4. Appellant also
argues that “[t]he use of adhesives is not required when the reinforcements
conform to the folds,” but “[h]ere the conforming feature provides a stronger
reinforcement at once from the beginning.” Request 4.
We are not persuaded that we misapprehended or overlooked the
conformance of Berger’s reinforcement members (tongue bar 40, groove bar
41). In particular, we note that we stated:
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[a]s shown at least in Berger’s Figures 2 and 3, the short,
bottom walls of tongue bar 40 (which would be the same for
tongue bar 40ʹ of Figure 5 cited by the Examiner) and portions
of the long, top wall of groove bar 41 (which would be the
same for groove bar 41ʹ of Figure 5 cited by the Examiner) are
in abutting contact with and do conform to portions of the
reversely folded portions of sections 12 of the door 10.
Decision 9. Regardless whether Berger may use a commercial adhesive to
connect his reinforcement members (tongue bar 40, groove bar 41) in place,
this does not detract from the fact that Berger’s reinforcement members
(tongue bar 40, groove bars 41) exhibit conformance as clearly shown in
Berger’s Figures 2 and 3 in order to satisfy the “conforming” language of
claim 1.
Accordingly, for the reasons discussed supra, the arguments in
Appellant’s Request do not persuade us that we erred in affirming the
Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Berger.
Rejection (3) – Obviousness based on Berger and Leist
Appellant argues this panel misapprehended or overlooked that
“[t]here is nothing in Leist to suggest moving reinforcement 32 in an
abutting longitudinal conforming relationship with male and female
members 66[,] 68,” and “[t]hus, a person of ordinary skill in the art would
not be motivated in any way to modify Berger even [if] he/she is made
aware of the existence of reinforcement 32 in Leist.” Request 4. We are not
persuaded by Appellant’s argument that we misapprehended or overlooked
anything with respect to the Examiner’s modification of Berger by the
teachings of Leist. The Examiner did not rely on Leist for a suggestion of
moving reinforcement member 32 in an abutting longitudinal conforming
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relationship with male and female members 66, 68, but rather the Examiner
relied on Leist “‘to modify Berger whereby his reinforcing members are
located under a reversely folded edges [sic] of the panels for such positive
positioning.’” Decision 9-10.
Appellant also argues this panel misapprehended or overlooked that
“Berger’s patent discloses the use of an adhesive to keep the reinforcement
in place (within the articulations or folds) but it does not conform to keep it
in place or to provide the enhanced structural integrity that allows the
claimed invention to achieve greater wind load ratings.” Request 4. We are
not persuaded by Appellant’s argument that we misapprehended or
overlooked Berger’s use of adhesive. Appellant’s argument is not
commensurate with the scope of the claim language. In other words, the
claims do not require conformance to keep the reinforcement in place or to
enhance the structural rigidity to allow for achievement of great wind load
ratings; the claims only recite that the reinforcement members have
conforming longitudinal portions coming in abutting longitudinal contact
with the reversely folded edge portions which is met by the Examiner’s
combination of Berger and Leist.
Appellant also argues this panel misapprehended or overlooked that if
Berger had realized the conforming joints performed better, he would have
included it in his earlier patent and thus, “[t]his is evidence that it was not
obvious at the time of the invention to invest time and money in making the
longitudinal wall of the reinforcement to conform with the joint[’]s internal
surfaces.” Request 4-5. We are not persuaded by Appellant’s argument that
we misapprehended or overlooked anything with respect to the Examiner’s
combination of Berger and Leist. The fact that Berger did not include the
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conforming longitudinal portions in his earlier patent is not evidence of
nonobviousness. There could be any number of reasons why the
conformance was not included in the earlier patent. For instance, Berger
may not have had the funds or incentive to pay for a more comprehensive
patent application at that time. Appellant’s arguments are based on the
faulty premise that “[i]t is reasonable to assume that Berger would want to
have the best performing design for his production [of] garage doors from
the very beginning.” Request 4. Although this might be the case, it is also
possible that Berger chose to go with a less expensive alternative as he was
starting out and then chose to exploit the more expensive design after
establishing the less expensive design in the market.
Accordingly, for the reasons discussed supra, the arguments in
Appellant’s Request do not persuade us that we erred in affirming the
Examiner’s rejection of claims 1-4 under 35 U.S.C. § 103(a) as unpatentable
over Berger and Leist.
Rejection (4) – Obviousness based on either Leist alone
or the combination of Berger and Leist together with Clark
Appellant argues this panel misapprehended or overlooked that “[t]he
modified (inclined) shiplap joints in Clark are even more remote and
difficult to conform than standard shiplap,” and “Leist does not teach
placing its reinforcement member 32 inside a joint and much less would a
person of ordinary skill in the art be motivated to introduce[] a conforming
reinforcement member in the odd-shaped joint disclosed by Clark.” Request
5. We are not persuaded by Appellant’s argument that we misapprehended
or overlooked anything with respect to the Examiner’s modification of either
Leist alone or the combination of Berger and Leist by the teachings of the
shiplap joint of Clark. We do not agree that Clark’s modified or inclined
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shiplap joints are not more remote and difficult to conform than standard
shiplap, as argued by Appellant. Appellant relies on his arguments set forth
supra for claims 1 and 2 with respect to anticipation based on Leist and
obviousness based on Berger and Leist. As we were not persuaded that we
misapprehended or overlooked anything with respect to Appellant’s
arguments corresponding to anticipation based on Leist and obviousness
based on Berger and Leist for the reasons discussed supra (see also Decision
11), we are also not persuaded that we erred in affirming the Examiner’s
rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over either
Leist alone or the combination of Berger and Leist, and Clark.
Rejection (5) – Obviousness based on Berger
Appellant argues this panel misapprehended or overlooked that “[t]he
cross-section of the reinforcements in Berger . . . do [sic] not include first,
second, third, fourth and fifth folded longitudinal walls,” but rather “the
reinforcement disclosed in figures 3 and 4 in Berger . . . has a rectangular
cross section.” Request 5. Appellant notes that Figures 8a through 8w show
possible reinforcement bars, and argues that “none of them will conform to
the joints as required in claim 2.” Request 5-6.
We are not persuaded by Appellant’s argument we misapprehended or
overlooked that Berger’s reinforcement member (tongue bar 40) has first
through fifth folded longitudinal walls, “said fourth and fifth wall
conforming to the contour of said complementing joints.” See App. Br.,
Clms. App’x.; see also Decision 12. Further, as pointed out by Appellant,
Berger discloses numerous other embodiments for the reinforcement
member in Figures 8a through 8w, and in particular, Berger’s Figure 8o
shows an embodiment of a reinforcement member having first through fifth
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folded walls which would conform to the contour of the complementing
joints. With respect to Appellant’s argument that the fourth and fifth walls
of Berger’s reinforcement member (tongue bar 40) are not “next to each
other,” we do not agree. We note that the walls do not have to be
immediately adjacent each other in order to be next to each other.
Finally, with respect to claims 3 and 4, Appellant argues this panel has
misapprehended or overlooked that “the reinforcement cross-sections shown
in composite figure 8, . . . would not conform . . . to the interior of the folded
longitudinal joints,” and that they are extruded, rather than folded. Request
6. We are not persuaded by Appellant’s argument that we misapprehended
or overlooked that the reinforcement cross-sections in Berger’s Figures 8a-
8w would conform. In particular, the reinforcements shown in Figures 8i,
8m, and 8o have longitudinal portions that would conform. As for the fact
that these reinforcements are extruded rather than folded, we noted supra
that the Examiner found “reversely folded” to be a product-by-process
limitation that would not be afforded any patentable weight.
Accordingly, for the reasons discussed supra, the arguments in
Appellant’s Request do not persuade us that we erred in affirming the
Examiner’s rejection of claims 2-4 under 35 U.S.C. § 103(a) as unpatentable
over Berger.
Secondary Considerations
Unexpected Results
Appellant argues that this panel misapprehended or overlooked “the
evidence adduced in [Appellant’s] declaration.” Request 6. More
particularly, Appellant argues this panel misapprehended or overlooked that
“[t]he introduction of [Appellant’s] new reinforcement member conforming
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to the longitudinal portions of the reinforcement in the articulated joints has
given [Appellant] an unsuspected competitive advantage,” and “[t]his
statement is supported in paragraph 3 of Mr. Berger’s declaration.” Id.
Appellant also argues this panel misapprehended or overlooked that the
Berger Declaration indicates that the declarant “(and his company) has
experienced a marked competitive advantage and one of his competitor’s has
shown interest in his product and even intended to purchase his company.”
Request 6-7.
We are not persuaded by Appellant’s argument that we
misapprehended or overlooked evidence adduced in Appellant’s declaration
because “a marked competitive advantage” as stated by declarant in
paragraph 3 of the Berger Declaration is not evidence of unexpected results.
Appellant may show that the claimed invention has an unexpected property
over the prior art “with evidence that the claimed invention exhibits some
superior property or advantage that a person of ordinary skill in the relevant
art would find surprising or unexpected.” In re Mayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997). An examination for unexpected results is a factual,
evidentiary inquiry. Id. None of Appellant’s above-quoted arguments
present the requisite facts and evidence necessary to establish unexpected
results.
Appellant also argues this panel misapprehended or overlooked that
“[Appellant] has been able to pass the required wind load tests with less
components (one reinforcement truss instead of three, a 67% usage reduction
for this component class,” and “[t]his translates to cost reduction for the
garage doors.” Request 7 (citing Berger Decl., paras. 4 and 5). Appellant
also argues this panel misapprehended or overlooked that the declarant
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“states that he has been in the garage door business for almost three decades
and never suspected his invention could be used to increase the
reinforcement of his articulated door to the extent that it does.” Id.
We again are not persuaded by Appellant’s arguments that we
misapprehended or overlooked information set forth in Appellant’s
declaration because Appellant has not presented evidence in the form of test
results. The declarant’s mere statements that “I have been able to pass the
high wind tests using less open reinforcement trusses (inside the garage
reinforcements),” and “[w]e have gone from three trusses to one truss and
we obtain the same results” are insufficient to satisfy the factual, evidentiary
inquiry necessary to establish unexpected results. Berger Decl., paras. 4 and
5. The alleged 67% usage reduction for the component class is not evidence,
but a mere unproven, conclusory statement from the declaration. Moreover,
Appellant has not explained what the cryptic statement about less
components, i.e., one reinforcement truss instead of three, means. In
addition, the Appellant’s mere statement that he “never suspected his
invention could be used to increase the reinforcement of his articulated doors
to the extent that it does” does not present the facts and evidence necessary
to establish unexpected results. Request 7.
Appellant also argues that this panel misapprehended and overlooked
“Mr. Berger’s declaration since it provides the objective evidence,” in the
form of “the attention of his competitors,” and Appellant’s “testi[mony] that
he did not suspect the effect obtained with the conforming longitudinal
portions of the reinforcement.” Request 7. Appellant also argues this panel
misapprehended or overlooked that “[t]his undisturbed evidence, when
properly taken into consideration, overcomes the alleged prima facie
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showing made by the Examiner.” Id. We are not persuaded by Appellant’s
arguments that we misapprehended or overlooked objective evidence in the
Berger Declaration. We noted that the Berger Declaration “did not submit
any objective factual evidence of the secondary consideration of unexpected
results.” Decision 14-15. The Berger Declaration did not provide any test
results showing that the invention performed unexpectedly and indeed, did
not even explain how Appellant went “from three trusses to one truss,” but
only provided “unsupported argument [which] does not take the place of
evidence.” Decision 15.
Accordingly, Appellant’s Request does not persuade us that this
panel’s Decision overlooked or misapprehended anything with respect to the
Berger Declaration and the secondary consideration of unexpected results.
Commercial Success
Appellant argues that this panel misapprehended or overlooked
Appellant’s evidence of commercial success, because “the requirements
applied by the Board are considerably more strict than what is needed to
show commercial success,” since “[i]n addition to ‘sales,’ the Board has
previously found ‘profitability’ as a factor militating in favor of finding
commercial success.” Request 8 (citing Blair-Stanek, Andrew, Profits as
Commercial Success, 117 Yale L. J. 642 (2008)). Appellant also argues this
panel misapprehended or overlooked that “Mr. Socarras’[s] declaration
provides sufficient evidence to find commercial success since a reduction in
costs will necessarily increase profitability,” and “[c]ost savings are well
documented in . . . Mr. Socarras’[s] declaration.” Request 8-9 (citing
Socarras Decl., paras. 7-10, 12, and 14-16).
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We are not persuaded by Appellant’s arguments that we
misapprehended or overlooked anything with respect to Appellant’s
evidence of commercial success. Indeed, we noted that the Socarras
Declaration failed to “persuasively establish[] commercial success of the
claimed invention, as the Declaration provides no data concerning sales of
the garage door and whether the sales represent a substantial share in the
market of garage doors.” Decision 16 (citing In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)). We decline to follow Appellant’s non-mandatory
authority in the form of a law journal article over our reviewing court’s
standard. Furthermore, we also found that “sufficient details are not
provided in the Declaration to establish that any market share or competitive
advantage gained was because of the claimed features,” and thus, we are not
persuaded that Appellant established a nexus between any commercial
success and the “new contoured or conforming reinforcement member” as
alleged by Appellant and as found lacking by the Examiner. See Decision
16 and Request 9.
Accordingly, Appellant’s Request does not persuade us that this
panel’s Decision overlooked or misapprehended anything with respect to the
Socarras Declaration and the secondary consideration of commercial
success.

CONCLUSION
In conclusion, Appellant’s Request does not persuade us that this
panel’s Decision misapprehended or overlooked any matter or that we erred
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in affirming the Examiner’s rejections of claims 1-4 under 35 U.S.C.
§§ 102(b) or 103(a).

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

mls