Ex Parte Marica

Patent Trial and Appeal Board

Oct 17, 2017

13469253 (P.T.A.B. Oct. 17, 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.
13/469,253 05/11/2012 Adrian Marica 2160.019296/46.1669-2.1 7430
88641 7590 10/19/2017
National Oil well Varrn
EXAMINER
c/o Amerson Law Firm, PLLC ROST, ANDREW J
2500 Fondren Road, Suite 220
Houston, TX 77063 ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
uspto @ amersoniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN MARICA
Appeal 2016-000225
Application 13/469,253
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-000225
Application 13/469,253
STATEMENT OF THE CASE
This is a response to Appellant’s Request for Rehearing (“Req.”) of
the Board’s Decision of June 16, 2017 (“Dec.”). Requests for Rehearing are
limited to matters overlooked or misapprehended by the Board in rendering
the original decision. See 37 C.F.R. § 41.52.
OPINION
Claims 13 and 26
Appellant asserts that the Board erroneously found that claims 13 and
26 depend from claims 12 and 25, respectively, and states that, on the
contrary, claims 13 and 26 depend from independent claims 1 and 15,
respectively. Req. 2 (citing Dec. 7; App. Br. A2, A5). Appellant further
asserts that, because of this error, the Board “erred in affirming the
Examiner’s rejection of claims 13 and 26 as being anticipated by Zieg.”
Req. 3.
We agree with Appellant that the Decision incorrectly states that
claims 13 and 26 depend from claims 12 and 25. Dec. 7. As Appellant
correctly notes, claim 13 depends from claim 1 and claim 26 depends from
claim 15. Req. 2. However, that error in dependency did not cause the
Board to incorrectly affirm the rejection of claims 13 and 26. On the
contrary, the Board reversed the Examiner’s rejection of these claims as
anticipated by Zieg. Dec. 7, 11. The subject matter of claims 13 and 26
closely track those of claims 12 and 25. An analysis of these claims (in view
of the corrected dependency) does not warrant a change in the Board’s
earlier conclusion reversing the Examiner’s rejection.
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Appeal 2016-000225
Application 13/469,253
Claims 28—30
Appellant also asks the Board to reconsider the decision to affirm the
Examiner’s rejection of independent claim 28, as well as the rejection of
claims 29 and 30, which depend from claim 28. Req. 3^4. The Board,
indeed, affirmed the Examiner’s rejection of claim 28 as anticipated by Zieg,
the rejection of claim 29 as unpatentable over Zieg and Skantar, and the
rejection of claim 30 as unpatentable over Zieg and Palmer. Dec. 11.
Appellant now asserts that claim 28 and its dependent claims 29 and 30
contain the same limitation that claims 12 and 25 contain, which was
determined that Zieg does not teach. Req. 2—\\ Dec. 7. Appellant
concludes, “[tjhus, using the Board’s reasoning, claim 28 is also not
anticipated by Zieg.” Req. 4.
To be clear, the Examiner rejected claims 1, 3, 6, 8, 10, 12—15, 17, 18,
21, 23, and 25—28 as anticipated by Zieg. Final Act. 10—14; Dec. 3.
Because Appellant argued claims 1, 3, 6, 8, 10, 14, 15, 17, 18, 21, 23, 27,
and 28 as a group (App. Br. 4—9), the Board exercised its discretion under 37
C.F.R. § 41.37(c)(l)(iv) and selected claim 1 as representative of the argued
group. Dec. 4. Appellant did not separately argue the patentability of
independent claim 28; much less draw any attention to the fact that it
contains the same limitation recited in separately argued claims 12 and 25.
Appellant now seeks to raise that issue. Regarding claim 29, this claim was
argued together with claims 9 and 22, and the Board selected claim 9 for
review. App. Br. 12—13; Dec. 9. Appellant did not separately argue the
patentability of claim 29. App. Br. 12—13. Regarding claim 30, Appellant
simply asserted that this claim was allowable “[f]or at least the
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Appeal 2016-000225
Application 13/469,253
aforementioned reasons” and the Board indicated that this was not
persuasive of Examiner error. App. Br. 13; Dec. 11.
As stated above, 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). With some exceptions not applicable here,
a request for rehearing may not raise arguments not previously relied upon
in the briefs before the Board. Id.', see Cooper v. Goldfarb, 154 F.3d 1321,
1331 (Fed. Cir. 1998) (“A party cannot wait until after the Board has
rendered an adverse decision and then present new arguments in a request
for reconsideration.”). Here, Appellant waited until submitting this Request
for Rehearing to argue that claims 28—30 are patentable because of their
particular limitations. The Board cannot overlook an argument that was not
raised.
DECISION
We grant Appellant’s Request solely to clarity the dependency of
claims 13 and 26, and deny the Request in all other respects.
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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