Ex Parte Daneshvar

Patent Trial and Appeal Board

Apr 25, 2013

11648944 (P.T.A.B. Apr. 25, 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.
11/648,944 01/03/2007 Yousef Daneshvar 5590
7590 04/26/2013
Yousef Daneshvar, MD. FACC
3425 Lone Pine Rd
West Bloomfield, MI 48323
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
04/26/2013 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 YOUSEF DANESHVAR
____________

Appeal 2010-006774
Application 11/648,944
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-006774
Application 11/648,944

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STATEMENT OF THE CASE
The Appellant, Yousef Daneshvar, filed a Request for
Reconsideration (“Request”) which we understand to be a request for
rehearing under 37 C.F.R. § 41.52. The Appellant requests that we
reconsider our decision of January 23, 2013 (“Decision”) affirming the
rejections of: claim 9 under 35 U.S.C. § 102(b) as anticipated by Daneshvar
‘146 (US 2003/0135146 A1, published Jul. 17, 2003); claims 10, 11, and 21
under 35 U.S.C. § 103(a) as unpatentable over Daneshvar ‘146 and
Daneshvar ‘389 (US 2003/0149389 A1, published Aug. 7, 2003); and claims
12, 13, and 22 under 35 U.S.C. § 103(a) as unpatentable over Daneshvar
‘146 and Daneshvar ‘389 in further view of Bass (US 6,585,673 B1, issued
Jul. 1, 2003).
OPINION
The purpose of a rehearing is to provide Appellant an opportunity to
identify “points believed to have been misapprehended or overlooked by the
Board,” 37 C.F.R. § 41.52(a)(1), not to provide Appellant a second appeal.
Here, the Request is based on two arguments. The first argument could have
been raised during the appeal but was not. A request for rehearing is not a
vehicle to raise arguments that could have been raised, but were not.
37 CFR § 41.52(a)(1) (“Arguments not raised in the briefs before the Board .
. . are not permitted in the request for rehearing. . .”1). The second argument
was fully briefed and addressed in the Decision. Thus, the Board did not
misapprehend or overlook the point, but fully considered it.

1 The Appellant does not argue that either of the two exceptions found in 37
CFR § 41.52 (i.e., good cause or response to a new grounds of rejection)
applies in the present case.
Appeal 2010-006774
Application 11/648,944

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The rejection of claims 9-13, 21, and 22 as anticipated by or unpatentable
over Daneshvar ‘146
The Appellant seeks reconsideration of the affirmance of the
rejections of: claim 9 as anticipated by Daneshvar ‘146; claims 10, 11, and
21 as unpatentable over Daneshvar ‘146 and Daneshvar ‘389; and claims 12,
13, and 22 under 35 U.S.C. § 103(a) as unpatentable over Daneshvar ‘146
and Daneshvar ‘389 in further view of Bass.
The Appellant argues that the Board misapprehended the disclosure of
Daneshvar ‘146. Request 2-3. Specifically, the Appellant argues that the
Board relied upon the Examiner’s finding that ATM2-B is disposed on the
outer surface of a prior encirclement. Request 3. In short, the Appellant
attempts to rely upon a miscitation by the Examiner which was subsequently
quoted by the Board as grounds for reconsideration. Namely:
While the Examiner’s statement at page 21 of the Answer may
have been inartful, the Examiner stated more fully that
“Daneshvar teaches at least some portion of the additional
attachment means (ATM2) that [sic] will be disposed on the
outer surface of a prior encirclement and is capable of
attachment to” the strap. Ans. 6 (emphasis added). The
Examiner also explicitly pointed out how the disclosure in
Figure 4 teaches that “the additional attachment means (ATM2-
B) would be disposed on the outer surface of the encirclement.”
Id. ATM2 depicted in Figure 4 attaches to the outer surface of
the prior encirclement. See e.g., Daneshvar ‘146, para. 87.

Decision 5.

In this passage of the Decision the second quote from the Examiner
erroneously refers to “ATM2-B” instead of “ATM2” as the additional
attachment means. However, both in the context of the Decision and the
Examiner’s Answer the error is evident and does not form a ground for
reconsideration.
Appeal 2010-006774
Application 11/648,944

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First, in the context of the Examiner’s Answer the error was clear.
Specifically, the Examiner stated:
In regards to claim 9, Daneshvar (US publication
2003/0135146) substantially teaches the apparatus of claims 6
and 7 (see rejection of claims 6 and 7 above). In Figure 4
Daneshvar teaches at least some portion of the additional
attachment means (ATM2) that will be disposed on the outer
surface of a prior encirclement and is capable of attachment to
stretchable material in the additional stretchable length. In
[0007] Daneshvar teaches that additional attachment means
(ATM2) is a hook-fastener attachment means. In [0066]
Daneshvar further teaches that the body of the strap (STR),
which forms the stretchable length, functions as a loop type of
attachment means which is attachable to hook-fastener
attachment means. Thus, the additional attachment means
(ATM2) of hook-fastener is attachable to the stretchable length
of loop type fastener. If the encirclement of the body portion is
initiated at location GP taught in Figure 4, for instance, the
additional attachment means (ATM2-B) would be disposed on
the outer surface of the encirclement.

Ans. 5-6. The Examiner refers to the ATM2 as the structure corresponding
to the limitation of claim 9, “at least some portion of the additional
attachment means is also disposed on the outer surface of a prior
encirclement” three times before the erroneous reference to ATM2-B.
Second, the error in the Examiner’s answer was never raised by the
Appellant. In fact, the Appellant argued the limitation of claim 9 only with
respect to ATM2. For example, in the Appeal Brief it was argued:
Claim 9 recites "at least some portion of the additional
attachment means is also disposed on the outer surface of a
prior encirclement for attachment to stretchable material in the
additional stretchable length."
The rejection contends that ATM2 meets the quoted
recitation. That contention is incorrect because ATM2 is at the
Appeal 2010-006774
Application 11/648,944

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end of the strap and while it is on the outer surface of the strap,
it would not be disposed on the outer surface of a prior
encirclement . . .

App. Br. 12 (emphasis added). Likewise, in the Examiner’s response to
argument section of his Answer, he only discusses ATM2. Finally, in the
Reply Brief, the Appellant only refers to ATM2 as the structure identified by
the Examiner as corresponding to the limitation of claim 9. Reply 2. It is
thus clear that both the Examiner and the Appellant understood that ATM2
was being cited by the Examiner as the “additional attachment means” of
claim 9. And the Appellant’s failure to raise the Examiner’s error of citing
to ATM2-B once in his Answer until now is a waiver of any such argument
as it could have been made on appeal.
Lastly, the Board understood the Examiner was relying upon ATM2
as the structure corresponding to the limitation in claim 9 and rendered its
decision accordingly. Thus, the Board did not rely upon ATM2-B as the
“additional attachment means” in rendering its decision.

The rejections of claims 12, 13, and 22 as obvious under 35 U.S.C. § 103(a)
over Daneshvar ‘146 in view of Daneshvar ‘389 and further in view of Bass
The Appellant reiterates its prior argument that the pocket 12 taught
by Bass is not a “strap.” Compare Request 4 to App. Br. 15. This argument
having already been fully considered cannot form the basis for rehearing.
And as the argument has already been fully considered, we see no need to
alter the Decision on pages 7 and 8 addressing the argument.
For the above reasons, the argument in the Appellant’s Request do not
convince us that we erred in affirming the Examiner’s rejections of claims 9-
13, 21, and 22.
Appeal 2010-006774
Application 11/648,944

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DECISION
The Board did not misapprehend or overlook any of the Appellant’s
arguments. In the first argued ground for reconsideration, the Appellant
raises a new argument which could have been made during the appeal but
was not. In the second argued ground for reconsideration, the Appellant
raises the same argument already made and considered. Thus, 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). See 37 C.F.R.
§ 1.136(a)(1)(v).

DENIED

Klh