Ex Parte Lugo et al

Patent Trial and Appeal Board

Jun 9, 2017

12974286 (P.T.A.B. Jun. 9, 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.
12/974,286 12/21/2010 Valentina Lugo PA15900U;
67010-541PUS1
3423
26096 7590 06/13/2017
TART SON OASKFY fr OT DS P C EXAMINER
400 WEST MAPLE ROAD
SUITE 350
FLORES, JUAN G
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/13/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALENTINA LUGO, LAWRENCE BINEK, and
VICTORIA S. RICHARDSON
Appeal 2015-002749
Application 12/974,286
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Valentina Lugo et al. (“Appellants”) have filed a Request for
Rehearing (“Request”) of the Decision on Appeal entered February 28,
2017, (“Decision”) in this Application. The Request seeks reconsideration
of the Board’s affirmance of the rejection of claims 1—16.
Appeal 2015-002749
Application 12/974,286
DECISION
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a)(1). The Request before us does not identify any point
believed to have been misapprehended or overlooked by the Board. Rather,
the Request simply reiterates the argument made on pages 3—7 of the Appeal
Brief and 2-4 of the Reply Brief, which were addressed in our Decision.
Specifically, Appellants assert that the Examiner’s rejection of claim 1 as
unpatentable over Carter is based on the optimization of a result-effective
variable, and the Examiner’s use of the doctrine of “design choice” is
unsupported. Reply Br. 2—3. Additionally, Appellants assert that the
Examiner improperly discusses dimensions rather than a ratio of dimensions,
and the Decision improperly addresses Appellants’ arguments rather than
“whether the [EJxaminer established a prima facie case of obviousness.” Id.
at 3.
Pages 4—8 of the Decision address Appellants’ arguments relating to
design choice and the optimization of a result-effective variable, and
pages 8—9 address the Examiner’s reference to a difference in dimensions.
Regarding this point, the Examiner’s discussion of “the dimensions as
claimed” follows the Examiner’s use of the phrase “the specific dimensional
ratios of the diameters and lengths that are covered in these claims.” Final
Act. 5. It is evident from the Examiner’s discussion that the dimensions
were mentioned in order to address the claimed ratio, not based on any
misunderstanding that a ratio was claimed. See id.
As for Appellants’ contention the Decision did not focus “on whether
the [EJxaminer established a prima facie case of obviousness” (Request 3),
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Appeal 2015-002749
Application 12/974,286
as discussed above, the Decision addresses all the issued identified by
Appellants. See Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI)
(precedential) (holding that the Board reviews a rejection for error “based
upon the issues identified by appellant, and in light of the arguments and
evidence produced thereon”). Appellants’ mere expression of disagreement
with the result of the Board’s review does not identify any point believed to
have been misapprehended or overlooked by the Board. See 37 C.F.R. §
41.52(a)(1).
The Request 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)(l)(iv).
REQUEST DENIED
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