Ex Parte Lander

Patent Trial and Appeal Board

Jul 27, 2017

12882192 (P.T.A.B. Jul. 27, 2017)

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.
12/882,192 09/14/2010 Kirt Lander PHDL1355-022 2478
26948 7590
VENJURIS, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
07/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ venj uris. com
vclmdocket @ venj uris. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRT LANDER
Appeal 2015-004008
Application 12/882,192
Technology Center 3600
Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In response to our Decision on Appeal, mailed April 4, 2017
(hereinafter “Dec.”), Appellant filed a Request for Rehearing on June 5,
2017 (hereinafter “Req.”). In the Request, Appellant asserts, with respect to
claim 3, that the Board erred in relying upon the Examiner’s alternative
finding (i.e., that straps h of Halsey1 correspond to the claimed inertia
straps), because (i) the Examiner’s alternative finding is inconsistent with
the Examiner’s finding with respect to independent claim 1, from which
claim 3 depends (i.e., that straps d, d’, e, e ’ of Halsey correspond to the
1 US 115,331 issued May 30, 1871.
Appeal 2015-004008
Application 12/882,192
claimed inertia straps) (see Req. 2—3; Dec. 7—8; Final Act. 2; Ans. 8, 10); (ii)
the Examiner presented the alternative finding for the first time in the
Examiner’s Answer, such that “the burden did not shift to the Appellant to
prove that claim 3 was not anticipated” (Req. 3 (emphasis omitted)); and (iii)
the Examiner’s alternative finding is in error (Req. 4). With respect to
claims 6 and 7, Appellant asserts that the Board overlooked the dependency
of these claims from claim 5 when reversing the Examiner’s rejection of
claim 5 (but not claims 6 and 7) as anticipated by Dallmer.2 See Req. 6;
Dec. 8—9.
Claim 3
Claim 3 depends from claim 2, which depends from independent
claim 1, and therefore includes all of the limitations of claims 1, 2, and 3, as
a single claim. Thus, to the extent the Examiner relies on an alternative
finding in the rejection of claim 3, which is distinct from the Examiner’s
findings with respect to the rejection of claims 1 or 2, the Examiner is
applying such finding to claim 3 in its entirety, which includes the
limitations of claims 1 and 2. In other words, with respect to the Examiner’s
alternative finding for the rejection of claim 3, the Examiner finds that
Halsey’s strap h discloses the claimed inertia straps as recited in claims 1, 2,
and 3, and the Examiner is no longer relying on Halsey’s straps d,d’,e,e’ to
disclose the inertia straps, as stated in the rejections of claims 1 or 2. Put
2 US 4,744,422 issued May 17, 1988.
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Application 12/882,192
another way, the Examiner’s alternative finding for the anticipation rejection
of claim 3 may stand on its own.
We agree with Appellant that the Examiner presented a new finding
with respect to claim 3 for the first time in the Examiner’s Answer. See Ans.
10 (“even though the [EJxaminer did not consider[] ref. h, ref. h can be the
inertia strap that couples (indirectly) to the heel captivator at the front of the
base.”). However,
[a]ny request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director
under § 1.181 of this title filed within two months from the entry
of the examiner’s answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute
a waiver of any arguments that a rejection must be designated as
a new ground of rejection.
37 C.F.R. § 41.40(a). Thus, the Examiner’s new finding did not improperly
shift any burden to Appellant to prove that claim 3 is not anticipated by
Halsey, as argued by Appellant supra', rather, Appellant was required to
either file a petition to have the Examiner’s rejection designated as a new
ground of rejection within the designated time period, or Appellant had the
option to present argument(s) challenging the Examiner’s new finding in the
Reply Brief. On the record before us, Appellant chose not to pursue either
option.
Notwithstanding, and in the interest of efficient prosecution, we have
considered Appellant’s arguments against the Examiner’s alternative
finding, which were presented for the first time in the Request for
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Application 12/882,192
Rehearing, and we agree that a preponderance of the evidence does not
support the Examiner’s finding that Halsey’s strap h discloses “a pair of
straps” (claim 2), “wherein each strap has a first end . . . adjustably coupled
to the heel captivator and [a] second end . . . removably coupled to the front
of the base” (claim 3). See Req. 4. Halsey’s strap h is described as “a
forked strap, h, which is hung to the projection or lug c at the front end of
the plate A.” Halsey, col. 2, para. 2. We agree with Appellant that “hung
to” does not explain whether or not strap h is “removably coupled” to the
front of the base, as required by claim 3. See Req. 4. For example, strap h
may be looped about lug c and sewn or otherwise permanently fastened to
the front of the base. Moreover, Halsey’s “forked strap” h is not disclosed
as including a pair of straps, each of which having first and second ends
(with the first end adjustably coupled to the heel captivator, and the second
end removably coupled to the front of the base), as also required by claim 3.
Accordingly, we modify our earlier decision and no longer, as
previously stated, “sustain the Examiner’s rejection of claim 3” as being
anticipated by Halsey. Dec. 8. Instead, and based on the record presented,
we reverse the Examiner’s rejection of claim 3 under 35 U.S.C. § 102(a) as
anticipated by Halsey.
Claims 6 and 7
Appellant is correct in that, because we reversed the Examiner’s
rejection of claim 5 under 35 U.S.C. § 102(b) as anticipated by Dallmer,
claims 6 and 7 also should have been reversed because of their dependency
on claim 5. Accordingly, we modify our earlier decision and no longer, as
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Application 12/882,192
previously stated, “sustain the Examiner’s rejection of claims” 6 and 7 as
being anticipated by Dallmer. Dec. 9. Instead, and based on the record
presented, we reverse the Examiner’s rejection of claims 6 and 7 under 35
U.S.C. § 102(a) as anticipated by Dallmer.
The remainder of our Decision remains unchanged.
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)(l)(iv).
REHEARING GRANTED
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