11869874 (B.P.A.I. Jun. 19, 2012)

Ex Parte Kotovsky

Board of Patent Appeals and InterferencesJun 19, 2012

11869874 (B.P.A.I. Jun. 19, 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. 11/869,874 10/10/2007 Jack Kotovsky IL-11313B 3836 24981 7590 06/19/2012 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER ROY, PUNAM P ART UNIT PAPER NUMBER 2856 MAIL DATE DELIVERY MODE 06/19/2012 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 JACK KOTOVSKY ____________ Appeal 2010-000630 Application 11/869,874 Technology Center 2800 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000630 Application 11/869,874 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 7, 8, 28, and 29 (App. Br. 3). Claims 1-6, 9-27, and 30-53 were cancelled (Id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary Claim 7 follows: 7. A microelectromechanical systems stress sensor array, comprising: a microelectromechanical systems array body, wherein said microelectromechanical systems array body comprises a silicone rubber body, a multiplicity of individual silicon disks in said silicone rubber body, a recess in each of said individual silicon disks, a silicon element that extends into said recess, said silicon element having limited freedom of movement within said recess, an electrical circuit in said silicon element, said electrical circuit including a piezoresistor material, and freestanding metal springs interconnecting said individual silicon disks. The Examiner rejected claims 7, 8, 28, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Liu (U.S. 2005/0021247 A1) in view of Biegelsen (U.S. 2002/0094701 A1) (Ans. 3-5). Appeal 2010-000630 Application 11/869,874 3 ISSUE Appellant’s responses to the Examiner’s positions present the following issue: Does the combination of Liu and Biegelsen render obvious claims 7, 8, 28, and 29? ANALYSIS Appellant contends that Liu and Biegelsen fail to teach many of the claim limitations of claims 7, 8, 28, and 29 (App. Br. 14-21). But we note that Appellant responds to the Examiner’s rejection of claims 7, 8, 28 and 29 by: (1) broadly describing the teachings of the Liu and Biegelsen references, (2) restating the Examiner’s findings, and (3) merely reciting the language of the claim, asserting that the aforementioned limitations are not disclosed by Liu or Biegelsen (Id.). We also note that Appellant failed to traverse the specific factual findings the Examiner set forth in the obviousness rejection of the claims (Id.). A statement that merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). We decline to examine the claims sua sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). See also Ex parte Belinne, No. 2009- 004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative). Appeal 2010-000630 Application 11/869,874 4 Moreover, attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). On this record, we find that Appellant has failed to present substantive arguments and supporting evidence persuasive of Examiner error regarding the Examiner’s ruling that the limitations of claims 7, 8, 28 and 29 are taught by Liu and Biegelsen. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); see also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (Arguments not made are considered waived). Appellant also contends that there is no reasonable expectation of success with the combination of Liu and Biegelsen (App. Br. 21-22). But Appellant bases this contention solely on the ground that claim limitations “are missing from both references” (Id. at 22). And as explained supra, Appellant failed to demonstrate that the Examiner erred in ruling that the claim limitations are taught by Liu and Biegelsen. Finally, Appellant contends that the Examiner did “not provide an explanation of how or why the Liu reference in view of the Biegelsen reference would or could be combined to produce the missing claim elements” (Id. at 22). But the Examiner did explain why one of ordinary skill in the art would have combined Biegelsen with Liu by stating that the Appeal 2010-000630 Application 11/869,874 5 combination would “provide a stretchable interconnected sensing fabric that is particularly suitable for flexibly connecting movable sensors such as the tactile sensitive skins of robots . . .” (Ans. 5). Appellant also presents additional arguments for the first time in the Reply Brief (Reply Br. 1-6). Because Appellant could have raised these arguments in the Appeal Brief to rebut the rejections made in the Final Office Action and did not do so, they waived these arguments, and therefore, we will not consider them. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). For these reasons, we sustain the Examiner’s rejections of claims 7, 8, 28, and 29. DECISION We affirm the Examiner’s decision rejecting claims 7, 8, 28, and 29 as obvious. 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)(iv). AFFIRMED pgg