11616312 - (R) (P.T.A.B. Sep. 26, 2013)

Ex Parte Jacobs

Patent Trials and Appeals BoardSep 26, 2013

11616312 - (R) (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGORY F. JACOBS ____________________ Appeal 2011-011428 Application 11/616,312 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and HYUN J. JUNG, Administrative Patent Judges. Opinion for the Board filed by JUNG, Administrative Patent Judge, with whom GREENHUT, Administrative Patent Judge, joins. Opinion Dissenting filed by BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-011428 Application 11/616,312 2 STATEMENT OF THE CASE Gregory F. Jacobs (Appellant) files a request for rehearing under 37 C.F.R. § 41.57 requesting that we reconsider our decision of September 30, 2013 (Decision). Requests for rehearing are limited to matters misapprehended or overlooked by the panel in rendering the original decision. 37 C.F.R. § 41.57(a)(1)(2011). In the Decision, we affirmed the Examiner’s rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over Jolitz (US 2004/0148895 A1, pub. Aug. 5, 2004) and Harris (US 5,950,319; iss. Sep. 14, 1999).1 In the Request for Rehearing (Req. Reh’g), the Appellant argues that “the Board has misapprehended or overlooked a very important and explicit claim limitation of claim 1.” Req. Reh’g 3. In particular, the Appellant contends that “[t]he point misapprehended or overlooked” was made on page 10, lines 14-24, of the Appeal Brief; page 2, lines 2-14, of the Reply Brief; and page 3, line 18, to page 4, line 10, of the Oral Transcript. Id. The Appellant argues that “clause (e) . . . includes the non-perpendicular . . . and non-parallel feature of clause (d) in clause (e), combined for greater clarity.” Id. The Appellant provides Figure 6 of Jolitz and Figure 2B of Harris and argues that neither Jolitz nor Harris provides a disclosure of a “projected extension of a non-perpendicular and non-parallel line of a given shingle being in predetermined visual intersection with at least one different line of a next-adjacent shingle on the two adjacent shingles that are laid up on a roof with the predetermined desired placement as to lateral spacing.” Id. at 4-5. The Appellant “assume[s] that Harris is combined with Jolitz, so 1 The Examiner withdraws a rejection of claims 1-11 under 35 U.S.C. § 112, second paragraph. Ans. 2. Appeal 2011-011428 Application 11/616,312 3 that the teaching of oblique lines from Harris is applied to Jolitz” and provides a Figure 6 of Jolitz modified by Harris. Id. at 5. Page 10 of the Appeal Brief provides claim 1, and lines 14-24 reproduces clause (e) of claim 1. Lines 2-14 of page 2 of the Reply Brief provide clauses (d) and (e) of claim 1. The cited portion of the Reply Brief states: (d) with said at least one line being non-perpendicular to and nonparallel to any of said upper, lower, right and left side edges of said shingle; See also clause (e) of claim 1, which reads: (e) with a projected extension of said at least one line of a given shingle being in a predetermined visual intersection with at least one different line of a next-adjacent shingle when the two adjacent shingles are laid up on a roof with the predetermined desired placement as to lateral spacing, vertical spacing and angular alignment and not being in the predetermined visual intersection with said at least one different line of a next-adjacent shingle when the two adjacent shingles are laid up on a roof and are not in the predetermined desired placement as to lateral spacing, vertical spacing and angular alignment; and Page 3, lines 18-25, of the Oral Transcript indicates the Appellants’ representative directed the Board’s attention to lines “43 double prime,” “40 double prime,” and “dotted lines showing what the projected extension of the solid lines would be of the shingle if there is a misalignment.” Page 4, lines 1-5 of the Oral Transcript, indicates that the Appellants’ representative argued that the Appellant “[has] come up with . . . a single line . . . or two or three in parallel . . . and if this shingle is lined up properly . . . as to vertical alignment, horizontal alignment, and angular alignment this line 43 double Appeal 2011-011428 Application 11/616,312 4 prime will intersect with 40 double prime” so that “you’ll know at a glance that you have all three alignments correctly made” and that “as a minimum a single line that gives you all those three advantages.” The Appellant also argues that “[w]ith reference to clause (e) . . . the projected extension P of the line X that is drawn on the right side of the left- most upper shingle, taken from one of the plywood panels of Harris, does not intersect with the line Y drawn on the right-most upper shingle (also taken from Harris)” and that “the projected extension P of line X does not intersect any of the horizontal lines 140e, 138e, 142e, nor the thick vertical line at the top of the right-most shingle of the Jolitz/Harris combination.” Req. Reh’g 5 (emphasis omitted). The Appellant further argues that “[t]his very explicit feature of clause (e) . . . is the essence of the invention and is not present in either of the references individually, or in the combined teachings.” Req. Reh’g 5. The Appellant argues that “[t]he Board’s Decision did not address this explicit feature of clause (e)” and “did not contain any articulated reasoning with some rational underpinning to support the failure of the combined references to deal with this specific feature.” Id. The Appellant also argues that “[c]laim 7 is very similar to claim 1, differencing only in that the projected extension language of claim 7 appears in clause (f) of claim 7 and requires that the projected extension of said at least one [non-perpendicular . . . and non-parallel] line of a given shingle be in a predetermined visual intersection with a different mark of a next adjacent shingle when the two adjacent shingles are laid up on a roof.” Req. Reh’g 5 (emphasis omitted). The Appellant thus argues “claim 7 refers to a Appeal 2011-011428 Application 11/616,312 5 different mark of the next adjacent shingle as distinguished from a different line of a next adjacent shingle.” Id. (emphasis omitted). The Appellants’ request does not cogently identify any point misapprehended or overlooked by the Board. See Req. Reh’g 3-5. It is a well-nigh insurmountable burden to convince this Board that we have overlooked material that was not submitted. Prescience is not a required characteristic of the Board. Cf. Keebler Co. v. Murray Baking Prods., 866 F.2d 1386, 1388 (Fed. Cir. 1989). Page 10 of the Appeal Brief reproduces claim 1; page 2 of the Reply Brief presents clauses (d) and (e) of claim 1 with emphasis; and pages 3-4 of the Oral Transcript indicates that the Appellants’ representative argued that one or more lines can provide vertical alignment, horizontal alignment, and angular alignment. The further arguments raised in the Request regarding the combination of Jolitz and Harris, clause (e) of claim 12, and claim 7 are not permitted because the Appellant does not indicate where they were raised in the briefs before the Board. See Req. Reh’g 4-6. Nor is there any showing of good cause in the Request that would allow us to consider the arguments of the Request. See 37 C.F.R. § 41.52(a)(2). DECISION For the reasons supra, the Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in 2 Even if the Appellant’s argument regarding clause (e) of claim 1 could be considered (Req. Reh’g 5), the argument is not persuasive because the Appellant’s assertion of what the combination of Jolitz and Harris would yield differs from and does not address the Examiner’s proposed combination (See Ans. 5). Appeal 2011-011428 Application 11/616,312 6 the 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 rvb Appeal 2011-011428 Application 11/616,312 7 BAHR, Administrative Patent Judge, dissenting. For the reasons set forth in my dissenting opinion (Decision 10-12), I do not join with my colleagues in denying Appellant’s Request.