11066554 (B.P.A.I. Jun. 5, 2009)

Ex Parte Pelz

Board of Patent Appeals and InterferencesJun 5, 2009

11066554 (B.P.A.I. Jun. 5, 2009)

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. 11/066,554 02/28/2005 David T. Pelz PEL-007 1678 21884 7590 06/08/2009 WELSH & FLAXMAN LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER LEGESSE, NINI F ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 06/08/2009 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 DAVID T. PELZ __________ Appeal 2009-000488 Application 11/066,554 Technology Center 3700 __________ Decided:1 June 5, 2009 __________ Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN WALSH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing of the decision entered March 31, 2009 (“Decision”). The Decision affirmed the rejection of claims 1-10 as 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-000488 Application 11/066,554 2 anticipated by Dionne. We decline to change the disposition of the claims in the previous Decision. The request for rehearing is denied. DISCUSSION Appellant argues that the previous Decision erred in concluding that the term “consisting essentially of” in claim 1 does not apply to the markings on the golf training mat (Req. Reh’g 2-3). This argument is not persuasive. Appellant’s argument, in essence, is that he disagrees with the claim interpretation in the Decision, but a request for rehearing must do more than re-argue issues that have already been decided, even if the applicant disagrees with the previous 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. An applicant dissatisfied with the outcome of a Board decision is entitled to appeal the decision, see 35 U.S.C. §§ 141 and 145, but is not entitled to have the same issue decided multiple times on the same record. Appellant has not identified a defect in our interpretation that the markings printed on the surface are defined using open language (see previous Decision, 6). Since Appellant has not pointed out any points that we overlooked or misunderstood, we decline to revisit our earlier conclusion. Appellant also argues that the previous Decision erred in concluding that, even if claim 1 required that the markings consist essentially of first, second and third foot and ball positions, Dionne would still anticipate it (Req. Reh’g 3-4). In particular, Appellant argues that “anything more than the claimed first, second and third foot and ball marking positions affects the basic and novel properties of the golf mat” (id. at 3). Appellant cites the Appeal 2009-000488 Application 11/066,554 3 Specification in several places as disclosing a golf mat for practicing short game shots (i.e., a wedge swing, a sand swing and a chip swing) (id. at 4-5). This argument is not persuasive. Appellant has not pointed out any points that we overlooked or misunderstood. In particular, the Appellant has not shown that the Specification passages he cites contradict the Decision’s statement that “[t]he Specification … does not specifically define the basic and novel properties of the invention nor does it define what elements (i.e., markings) would affect those basic and novel properties” (Decision 7). The passages recited in the Request for Rehearing do not state that the basic and novel characteristics of the disclosed mat require that the markings on the mat be limited only to those for a wedge swing, a sand swing, and a chip swing. The Specification passages that Appellant cites, therefore, are not points that we overlooked or misunderstood. Further, we note that the preamble of claim 1 specifically states that the golf training mat is “for practicing short game shots including a wedge swing, a sand swing, and a chip swing” (claim 1, emphasis added). Thus, claim 1 itself indicates that markings for golf shots other than the specified three shots are contemplated. In summary, Appellant has not shown that any points were overlooked or misunderstood in the Decision. The Request for Rehearing is denied. REHEARING DENIED Appeal 2009-000488 Application 11/066,554 4 lp WELSH & FLAXMAN LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA VA 22314