Ex Parte Chung et al

Board of Patent Appeals and Interferences

Oct 14, 2009

10451028 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JONG HOON CHUNG, SUNG KOOK KIM,
JIN HWAN CHOI, and KYUNG NAM LEE
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Appeal 2009-000538
Application 10/451,028
Technology Center 1700
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Decided: October 14, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request reconsideration of our Decision mailed July 7,
2009 (“Dec.”), wherein we sustained the Examiner's rejection of the
appealed claims under 35 U.S.C. § 103(a). (Request for Rehearing (“Req.”),
filed Sep. 16, 2009.) We have reviewed our Decision in light of the
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arguments presented by Appellants in the Request. However, we are not
persuaded that our Decision was in error.
Appellants first argue that “the ‘Findings of Fact’ section” of our
Decision erroneously states that Appellants did not dispute enumerated
findings 2 and 4.
According to The Bluebook: A Uniform System of Citation rule 1.2(a)
(18th ed. 2005), when no introductory signal is used, the cited authority
“directly states the proposition.” When the signal “see generally” is used,
the cited authority “presents helpful background material related to the
proposition.” Id. rule 1.2(d).
In support of enumerated findings 2 and 4, we cited the Examiner’s
Answer without the use of an introductory signal. The cited pages from the
Examiner’s Answer are from the “Response to Argument” section and
contain language which directly supports the stated findings. We also cited
to Appellants’ Brief, but used the introductory signal “see generally,” to
indicate that the Brief provides relevant background material, i.e., the
arguments considered by the Examiner in making the statements which
appear on the cited pages of the Answer. Therefore, contrary to Appellants’
contention, our Decision does not contain any “statement[s] in the ‘Findings
of Fact’ section that Appellants did not dispute” enumerated findings 2 and 4
(Req. 2). (Cf. Dec. 7, 1st and 3rd paras.)
Appellants argue that “[n]either the examiner nor the Board addressed
the issues raised in the arguments on page 14 of the Brief . . . relating to the
difference in molecular weight between the copolymers of Kim et al. and
Appellant's copolymers assuming arguendo that Toshitaka disclosed
branched copolymers have the molecular weight recited in the Group 2
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claims.” (Req. 14.) Appellants are directed to page 7 of both the Answer
and our Decision wherein Appellants’ arguments were addressed.
Appellants also argue that the Board erred in finding that the
Examiner established a reasonable expectation of success in combining the
teachings of Kim and Toshitaka. (Req. 5-7.) According to Appellants, we
erroneously supported this finding by referencing a portion of the
Examiner’s Answer relating to motivation to combine, which is a separate
issue from reasonable expectation of success. (Req. 6.)
Appellants’ argument is unpersuasive as it is based on a
mischaracterization of our Decision. Contrary to Appellants’ contention, we
did not identify the quoted language from our Decision (see Req. 5 (quoting
Dec. 7)) as being a statement by the Examiner, hence our omission of any
direct citation to the Answer. Rather, it is clear from our Decision that our
“agreement with the Examiner” (Dec. 7) pertains to the Examiner’s reasoned
analysis of the arguments and “‘evidence of no reasonable expectation of
success’ or ‘likelihood of increased moldability from branched copolymer’
(Br. 9-12)” (Dec. 7) presented on pages 9-12 of Appellants’ Brief. Such
analysis was presented in the Examiner’s “Response to Argument” (Ans. 4-
7). Cf. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (noting that the
burden of analyzing and explaining data to support nonobviousness rests
with the Appellant). In addition, we agreed that Appellants’ evidence was
properly relied on in the Examiner’s Response to Argument to support the
proposed motivation to combine Kim and Toshitaka which formed the basis
of the Examiner’s statement of the rejection (see Ans. 4, 1st para.). (See Dec.
7, 2nd para.)
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Appellants’ remaining arguments are based upon points overlooked by
the Examiner. For example, Appellants argue that “the rejections should be
reversed because the examiner failed to present any evidence or technical
reasons for a reasonable expectation of success of the combination of the
references and failed to dispute the evidence cited and arguments made on
pages 10-12 of the Brief” (Req. 8). Similarly, Appellants argue that “the
examiner has failed to support his argument that the branched copolymers of
Toshitaka have the molecular weights recited in the Group 2 claims” and,
therefore, “a prima facie case of obviousness has not been established” (Req.
14).
37 C.F.R. § 41.52(a)(1) provides that an Appellant must “state with
particularity the points believed to have been misapprehended or overlooked
by the Board [in its Decision].” Id. (emphasis added). This section further
states that “[a]rguments 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.” Id. Appellants had the opportunity,
but elected not to file a Reply Brief identifying errors in the Examiner’s
Answer. Accordingly, we have not considered those arguments which fail to
particularly point out error on the part of the Board, i.e., arguments and
evidence presented in the Brief or Answer which were misapprehended or
overlooked by the Board in its Decision.
In conclusion, based on the foregoing, we have granted Appellants’
request to the extent that we have reconsidered our Decision, but we deny
Appellants’ request to make any change therein.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

kmm

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