Ex Parte Mandigo et al

Board of Patent Appeals and Interferences

Aug 24, 2012

11588111 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/588,111 10/26/2006 Frank N. Mandigo 6113B-002728/US/COA 1211
28997 7590 08/24/2012
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
08/24/2012 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 FRANK N. MANDIGO, PETER W. ROBINSON, DEREK E. TYLER,
ANDREAS BOEGEL, HANS-ACHIM KUHN, FRANK M. KEPPELER and
JOERG SEEGER
__________

Appeal 2010-012290
Application 11/588,111
Technology Center 1700
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON REHEARING

The Appellants request rehearing of a DECISION ON APPEAL dated May
10, 2012,1 affirming the Examiner’s decision that claims 60-69 are unpatentable
over the prior art of record.

1 Hereinafter “Decision.”
Appeal 2010-012290
Application 11/588,111

2

A request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the briefs
are not permitted in a request for rehearing except as permitted by 37 C.F.R.
§§ 41.52(a)(2) and (a)(3). See 37 C.F.R. § 41.52(a)(1) (2011).
I.
The Board’s Decision affirmed the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 60-64 as unpatentable over Fujiwara and claims 65-69 as
unpatentable over Fujiwara in view of Hirai.
In the Request for Rehearing, Appellants contend that the Board improperly
treated Appellants’ argument regarding the criticality of the subrange defined by
the Ni:Co and (Ni+Co)/Si ratios as “new argument” and by expressly declining to
consider it. Request 2. As such, Appellants contend that the Board should have
considered this argument and should have reversed the rejections based thereon.
Id. at 5.
The Appellants’ contentions are addressed below.
II.
Although Appellants contend that the Board improperly treated Appellants’
argument regarding the criticality of the subrange defined by the Ni:Co and
(Ni+Co)/Si ratios as “new argument,” this contention misstates the Board’s
treatment of this argument. Indeed, the Decision substantively treats this argument
on the merits. See Decision, p. 7-8. The Decision only treated as new the
supplemental material relying on Figure 5 and Example 4, including Spec. para.
[0083], as well as the argument relying on Appellants’ Response of August 14,
2008, which refers to declarations submitted in the parent Application. Id. at 8-9.
As the Decision states, Appellants had not shown good cause for the delay in
Appeal 2010-012290
Application 11/588,111

3

presenting arguments in reliance on Figure 5 and Example 4, as well as the
declarations filed in the parent Application. Decision 9. Appellants now contend
that these arguments, newly added to their Reply Brief, were in response to the
Examiner’s Answer, which argued that Appellants’ had failed to provide factual
evidence by way of declaration under 37 C.F.R. § 1.132. Request 5.
Though the Examiner’s Answer maintains that Appellants failed to provide
evidentiary support for an argument, in this case urging criticality and unexpected
results, in the Answer, such a position is not alone sufficient to establish good
cause for the delay in presenting newly added argument and evidentiary support in
a Reply Brief. The Examiner’s statement of rejection in the Answer appears to be
substantially the same as, if not identical to, the statement of the rejection in the
Final Office Action. The Examiner did not make any additional findings of fact
regarding the references in the Answer. Moreover, the argument in the Examiner’s
Answer with regard to Appellants’ failure to provide factual evidence by way of
Rule 132 declaration is substantially the same as, if not identical to, this argument
in the Final Rejection (see Final Rejection, p. 7). In the absence of a showing of
good cause, arguments and evidence that could have been presented in the
Principal Brief on Appeal, but were not, may not be presented in the Reply Brief.
Ex parte Borden, 93 USPQ2d 1473,1474 (BPAI 2010) (informative) ("[a]ny bases
for asserting error, whether factual or legal, that are not raised in the principal brief
are waived"); see also Optivus Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978,
989 (Fed. Cir. 2006) ("an issue not raised by an appellant in its opening brief ... is
waived") (internal citation and quotation marks omitted). Accordingly, the
Decision properly treated as new the argument in reliance on Figure 5 and
Example 4, including Spec. para. [0083], as well as the argument relying on
Appeal 2010-012290
Application 11/588,111

4

Appellants’ Response of August 14, 2008, which refers to declarations submitted
in the parent Application. We again decline to consider these new arguments.

III.
The Appellants’ Request for Rehearing has been granted to the extent that
the DECISION ON APPEAL dated May 10, 2012, has been reconsidered in light
of the Appellants’ arguments. However, the Request is denied, and the Decision is
not modified in any respect.

REHEARING DENIED

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