Ex Parte Newman

Patent Trial and Appeal Board

Apr 3, 2013

11743930 (P.T.A.B. Apr. 3, 2013)

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.
11/743,930 05/03/2007 Martin H. Newman P-6684C1C1 7811
23869 7590 04/04/2013
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
PAYER, HWEI SIU CHOU
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
04/04/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN H. NEWMAN
____________

Appeal 2010-012074
Application 11/743,930
Technology Center 3700
____________

Before JAMES P. CALVE, HYUN J. JUNG, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-012074
Application 11/743,930

2

STATEMENT OF THE CASE
Martin H. Newman (“Appellant”) filed a request for rehearing
(“Request”), on March 25, 2013, under 37 C.F.R. § 41.52, of our decision
mailed January 25, 2013 (“Decision”). Requests for Rehearing are limited
to matters overlooked or misapprehended by the Panel in rendering the
original decision. See 37 C.F.R. § 41.52. In our Decision, we affirmed the
Examiner’s decision rejecting claims 1-9 as obvious.

OPINION
In the Request, Appellant asserts that “it is not enough to show that a
reference ‘can’ produce, i.e., is capable of, a result, but, rather, that a result
must necessarily be present to support a rejection based on inherency.”
Request 1. Appellant contends that there is “no basis in Janowski to indicate
that the coating will necessarily be harder than the blade steel.” Id. at 2.
Appellant asserts that since there is no disclosure as to relative hardness of
the coating, “[t]here can be only reliance on the inherent properties of
materials in Janowski.” Id. at 3. And, “[c]onsidering Janowski offers
various possibilities, no certainty is present, as required by case law.” Id.
Appellant’s Request reflects a misunderstanding of our Decision. We
found that Janowski explicitly discloses a coating of “essentially pure
diamond.” Decision 5 (citing Janowski, col. 4, ll. 45-50). That finding was
not based on inherency. Rather, it was based on Janowski’s explicit
disclosure of more than one embodiment of a coating. One embodiment
explicitly disclosed is that of essentially pure diamond. Janowski, col. 4.,
ll. 45-50. Other embodiments explicitly disclosed are mixtures containing
diamond, graphite, and a variety of hard intermediate species. Id.
Appeal 2010-012074
Application 11/743,930

3
Having found an explicit disclosure of a coating of essentially pure
diamond, we noted that “it is undisputed that ‘essentially pure diamond’ is
harder than the metal used to make Janowski’s blank.” Decision 5. That a
coating of essentially pure diamond is “a second material that is harder than
the metal,” as required by the claims, was not contested by Appellant in the
initial briefing and is similarly not contested in Appellant’s Request.
Accordingly, Appellant has not persuaded us that we overlooked or
misapprehended any points that were argued on appeal.

DECISION
Appellant’s Request has been granted to the extent that we have
considered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making 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)(1)(iv).

DENIED

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