Ex Parte Lepre

Patent Trial and Appeal Board

Apr 28, 2017

13911357 (P.T.A.B. Apr. 28, 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.
13/911,357 06/06/2013 Stefano Lepre 1083- 108PUSCON 4826
7590 05/02/201729973
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
BROWN, DREW J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFANO LEPRE
Appeal 2014-007811
Application 13/911,357
Technology Center 3600
Before: JENNIFER D. BAHR, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Stefano Lepre (Appellant) has filed a Request for Rehearing
(“Request”) of the Decision on Appeal entered November 23, 2016
(“Decision”), in this Application. The Request seeks reconsideration of the
Board’s affirmance of the rejection of claims 1—3, 5—9, 12—14, and 27—30.
(I) Opel and Claim Construction of Claim 1
Appellant asserts that “[cjonstrued consistent with the specification,
the ‘connection region’ must extend at least to the line 6-6 in Figure 2 of
Appellant’s drawings” (Request 3) and “the Honorable Board failed to
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Application 13/911,357
consider the Appellant’s specification, the dependent claims, and the cited
art itself when construing the term ‘connection region’” (Request 4).
We disagree that the Decision failed to consider the Specification
when construing claim 1. Rather, the Decision specifically refers to the
Specification when construing the “connection region” as being defined in
terms of stiffness provided by shape, but not being limited to any particular
shape. See Decision 5—6 (discussing Spec. 134).
Appellant quotes a paragraph from page 9 of the Reply Brief and
asserts that this paragraph presents an argument not addressed by the
Decision. Request 4—5. The quoted paragraph states:
Upon review of Appellant’s specification, the location of
the indicator lines for reference numerals 204 and 118 (on the
right) makes clear that the end sections 204, which are the
“connection regions” 118, extend a considerable distance
inwardly from the ends of the tubular cross-beam member.
Moreover, since “[a]s can be seen in FIG. 6, the end section 204
has an end cross-sectional shape that... is suitable for attaching
the end section to a side trailing arm” and “also provides a
torsionally stiff end section, which as noted earlier, is a
connection region”, the “connection region” necessarily extends
inwardly at least as far as the line 6-6 in Figure 2, since the line
6-6 is within the connection region.
Reply Br. 9. Although the paragraph above discusses an example of
Appellant’s invention, this paragraph does not constitute an argument
separate from Appellant’s contention regarding claim construction, which
the Decision addresses. After the quote above, the Reply Brief quotes
paragraph 34 of the Specification and dependent claim 6 (Reply Br. 9), and
Appellant asserts:
[T]he claim term “connection region,” read in light of the other
limitations in claim 1 and 27 and consistent with the
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Application 13/911,357
specification, includes at least those sections of the cross-beam
member where the trailing arms connect and that are torsionally
stiff because of their transverse cross-sectional shape, and may
also include the less torsionally stiff transition sections.
Reply Br. 10 (emphasis added). The Reply Brief goes on to assert that, in
Opel, what is to the left of section line A-A is a torsion-proof zone
corresponding to the recited “connection region” and therefore, the portion
of Opel where the wall thickness varies is within the connection region of
Opel instead of between the connection region and a central section as
recited in claim 1. Pages 5 and 6 of the Decision address Appellant’s
proposed claim construction and directly quote paragraph 34 of Appellant’s
Specification. In this regard, the Decision states:
Assuming, for the purpose of argument, that profiled end
tube 19 in Figure 9 of Opel is located to the left of section line
A-A, 2 we do not agree that it is necessary to consider the entire
structure depicted in Figure 9 to be a connection region and to
then discount the varying wall thickness depicted in Figure 9 as
something within such a connection region.
Decision 6 (footnote omitted). Thus, we disagree that the Decision failed to
address the above-noted argument. The fact that each paragraph in
Appellant’s discussion was not cited in the Decision does not mean that the
argument itself was not considered. We agree with Appellant’s construction
of claim 1 in which the “connection region” “may also include the less
torsionally stiff transition sections.” Reply Br. 10 (emphasis added).
However, under the broadest reasonable interpretation of claim 1, the
connection region does not require such a transition region. Contrary to
Appellant’s contentions on pages 5—6 of the Request, the limitations of
dependent claim 6 underscore this lack of requirement for a transition region
in claim 1. Claim 6, which depends directly from claim 1, recites, in
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Application 13/911,357
pertinent part, “wherein each of the connection regions further comprises an
end section formed at each of the opposite ends of the cross-beam member
and a transition section formed between the end section and the central
section, wherein the end sections are torsionally stiff.” Consequently, it is
not until claim 6 that the requirement for a transition structure within the
connection region is recited.1 Thus, independent claim 1 does not require a
transition region within the connection region. See Curtiss-Wright Flow
Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006)
(discussing the principle of “claim differentiation,” which, consistent with
the provision of 35 U.S.C. § 112, fourth paragraph, that “a claim in
dependent form shall contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter claimed,” “refers to the
presumption that an independent claim should not be construed as requiring
a limitation added by a dependent claim”).
Appellant further argues the Decision did not consider Appellant’s
assertion that the structure described in Opel as “continuously flowing” from
a circular cross-section to a double-walled cross-section is not depicted in
Figures 8 and 9 of Opel. Request 6—7; see also Reply Br. 13. From this
depiction (or lack of depiction) in Figures 8 and 9 of Opel, Appellant
contends:
It follows that Figures 8 and 9 illustrate portions of the
tube of Opel to the left of line A-A in Figure 2, that is, Figures 8
and 9 illustrate part of the “connection region” of Opel, and
therefore the variations in wall thickness shown in Figures 8
and 9 are entirely within the “connection region” of Opel.
1 We address whether Appellant made arguments for the patentability of
claim 6 below.
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Application 13/911,357
Since the Opel reference only teaches wall thickness
variation within the connection region, it does not meet the
claim limitation “wall thickness that is generally uniform
circumferentially and varying longitudinally from the torsionally
elastic central section to each of the torsionally stiff connection
regions”.
Reply Br. 14.
Appellant appears to take our disagreement with the above-noted
argument for a failure to consider it. As stated on page 6 of the Decision,
“we do not agree that it is necessary to consider the entire structure depicted
in Figure 9 to be a connection region and to then discount the varying wall
thickness depicted in Figure 9 as something within such a connection
region.” In other words, the fact that Figure 9 does not depict a
“continuously flowing” portion does not require a conclusion that everything
depicted in Figure 9, and in particular, the thinning portion of the wall, be
within a connection region. Rather, as discussed in the Decision, “the
connection region is defined in terms of stiffness provided by a shape, but
the connection region is not limited to any particular shape.” Decision 6; see
also Spec. 134. As further discussed in the Decision, the Examiner’s
annotated version of Figure 9 of Opel indicates what in Opel the Examiner
finds corresponds to the connection region recited in claim 1, and we are not
apprised of error in the Examiner’s findings on this point or the Examiner’s
interpretation of claim 1. See Decision 6; see also Ans. 5.
(II) Arguments for the Patentability of Claim 6
Appellant argues, “the Honorable Board merely asserts (page 6 of the
Decision) that ‘[cjlaims 2, 3, 5—9, 12—14, and 27—30 fall with claim F
without any consideration of the actual language of those claims, even
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though the Appellant made specific arguments with respect to claim 6.”
Request 6 (emphasis added).
Appellant did not make separate arguments for the patentability of
dependent claim 6. Specifically, the Arguments section of the Appeal Brief
does not substantively discuss claim 6 at all. See Appeal Br. 4—17. Rather,
the Appeal Brief refers to the dependent claims as a group, stating, “Since
claims 2, 3, 5 to 9, 12 to 14, 28 and 30 depend directly or indirectly from
claim 1 or 27, the Applicant respectfully submits that these claims are also
not anticipated by the Opel reference.” Appeal Br. 17. In this regard, the
Code of Federal Regulations states:
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately. Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate subheading that
identifies the claim(s) by number. A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.
37 C.F.R. § 41.37(c)(l)(iv); see also Decision 3 (selecting claim 1 as
representative). The Appeal Brief does not provide separate arguments, or
even a heading, directed specifically to claim 6. Thus, for the purposes of
the Appeal, Appellant waived any argument as to the patentability of claim 6
aside from the argument based on the dependency of claim 6 from claim 1.
The Reply Brief refers to claim 6, stating:
Further, dependent claim 6 expressly refers to the
transition sections and recites (inter alia):
...wherein each of the connection regions further
comprises an end section formed at each of the
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opposite ends of the cross-beam member and a
transition section formed between the end section
and the central section, wherein the end sections are
torsionally stiff.
Thus, it is clear from claim 6 that the “connection regions”
may include not only the torsionally stiff end sections but also
the transition sections.
Accordingly, the claim term “connection region,” read in
light of the other limitations in claim 1 and 27 and consistent with
the specification, includes at least those sections of the cross­
beam member where the trailing arms connect and that are
torsionally stiff because of their transverse cross-sectional shape,
and may also include the less torsionally stiff transition sections.
Reply Br. 9—10.
Appellant’s discussion of claim 6 merely points out what this claim
recites and does not constitute a separate argument for its patentability.
Furthermore, even assuming, arguendo, that such statements qualified as an
argument for the patentability of claim 6, this discussion appears for the first
time in the Reply Brief, without an explanation as to why it was not
presented in the Appeal Brief or how it responds to an argument raised in the
Examiner’s Answer. Accordingly, it is untimely and does not negate the
waiver of any arguments resulting from Appellant’s failure to separately
address claim 6 in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2). Thus, for
both of the above-noted reasons, we disagree with Appellant’s assertion (see
Request 5—6) that Appellant made specific arguments regarding claim 6,
which were not considered by the Board.
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DECISION
We grant Appellant’s Request to the extent that we have considered
our Decision in light of the points raised by Appellant, but we deny the
Request with respect to 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)(l)(iv).
DENIED
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