Ex Parte Miller et al

Patent Trial and Appeal Board

Apr 28, 2017

12090379 (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.
12/090,379 04/16/2008 Robin Mihekun Miller 60469-!97PUS1;0000051-W0 2555
64779 7590 05/02/2017
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
EXAMINER
KRUER, STEFAN
ART UNIT PAPER NUMBER
3654
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):
frederic .tenney@otis.com
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN MIHEKUN MILLER,
RICHARD N. FARGO, BORIS TRAKTOVENKO, and
JAMES LEO HUBBARD
Appeal 2015-002052
Application 12/090,379
Technology Center 3600
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellants1 request rehearing under 37 C.F.R. § 41.52 of our Decision
of January 4, 2017, wherein we affirmed the Examiner’s decision rejecting
claims 1, 3—13, 15—20, and 23—27. We decline to change the Decision.
1 The real party in interest is identified as Otis Elevator Co., which is
identified as a part of United Technologies Corp. App. Br. 1.
Appeal 2015-002052
Application 12/090,379
DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03). It may not rehash arguments originally made in the
Brief, neither is it an opportunity to merely express disagreement with a
decision. It may not raise new arguments or present new evidence except as
permitted by paragraphs (a)(2) through (a)(4). See 37 C.F.R. § 41.52. The
proper course for an Appellant dissatisfied with a Board decision is to seek
judicial review, not to file a request for rehearing to reargue issues that have
already been decided. See 35 U.S.C. §§ 141, 145.
Appellants disagree with our adoption of “the Examiner's finding that
the Ishii reference disclosed a steel rope having a different load carrying
capacity than the non-steel ropes.” Request 1. As discussed supra, a request
for rehearing is not the proper venue for expressing disagreement with our
Decision. Appellants’ disagreement with our finding does not identify any
matter overlooked or misapprehended by the Panel.
Appellants further contend that our Decision is “contrary to the law
controlling ‘inherency.” As our decision is not based on a finding of
inherency, Appellants’ further contention does not identify any matter
overlooked or misapprehended by the Panel. See Dec. 1—6.
Appellants argue that Preda is distinguishable on its facts and not
controlling. Request 7—8. In other words, Appellants contend that we
misapplied or misapprehended the holding of Preda. However, Preda is but
one illustration of the principle that the prior art must be viewed from the
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Appeal 2015-002052
Application 12/090,379
perspective of one of ordinary skill in the art, including the inferences one
skilled in the art would reasonably be expected to draw from the express
teachings of the reference. In that case, which affirmed a rejection of
anticipation, the court looked to teachings outside the specific example
relied on by the Examiner to determine what the example would have
conveyed to one of skill in the art. Preda, 401 F.2d at 826—27. Although
the example was based on temperatures outside the claimed range, the court
noted that the reference (Thacker) described a similar reaction occurring
within the claimed range, stated that the reference used lower temperatures
than had previously proved feasible, and recognized that higher temperatures
could be used. Id. The court stated:
We are convinced from this that, although Thacker does not
expressly state that carbon disulfide could be produced by
reacting methane and sulfur in the presence of activated charcoal
as a catalyst at temperatures within the range recited in the
appealed claims, there would be a recognition of this fact from a
consideration of Thacker by one skilled in the art.
Id. at 827. The specific facts of each case must be considered to determine
what inferences would reasonably be drawn from the express teachings of
the prior art by one of skill in the art.
Our Decision notes two teachings of Ishii that would have led one of
ordinary skill in the art to understand that Ishii teaches use of a steel rope
with a different load-carrying capacity than that of the synthetic fiber ropes.
See Dec. 4—5. For emphasis, we reiterate the Examiner’s reliance on
Embodiment 2 of Ishii, described at paragraphs 23—25. As noted in our
Decision (p. 5), and by the Examiner (Ans. 5), Ishii teaches that “[t]he
number of synthetic fiber ropes 12 is set such that the strength required of
the main rope group 32 from a design perspective is achieved by the
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Appeal 2015-002052
Application 12/090,379
synthetic fiber ropes 12 alone.” Ishii para. 23. Thus, steel rope 13 “is added
superfluously to the overall strength of the main rope group 32, and loads do
not have to be borne by the steel rope 13 during normal operation.” Ishii
para. 24. In our Decision, we found:
Although Ishii does not explicitly state what safety factor may
apply to steel rope 13, the fact that it is calculated separately from
the group of four synthetic ropes shown in Figure 3 (relating to
Embodiment 2) supports the finding that one of ordinary skill in
the art would understand from Ishii that steel rope 13 has a
different load carrying capacity than one of the synthetic ropes.
Dec. 5. Thus, we did not misapply or misapprehend Preda.
Appellants argue on rehearing that “the more reasonable conclusion is
that the steel rope in Embodiment 2 also has a load carrying capacity that is
2.5 times the maximum load, which is the same as the synthetic ropes in that
embodiment.” Request 9. However, as noted supra, a Request for
Rehearing is not the proper venue for expressing disagreement with our
decision.
Appellants’ arguments do not persuade us of error in the rejection or
our decision affirming the rejection.
DECISION AND ORDER
We grant the Request to the extent that we have considered the
arguments pertaining to matters allegedly overlooked or misapprehended,
but otherwise deny the Request.
DENIED
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