Ex Parte Petri

Patent Trial and Appeal Board

Oct 25, 2017

13054817 (P.T.A.B. Oct. 25, 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.
13/054,817 01/19/2011 Stefano Petri 73816RCE 9970
7590 10/25/2017
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
10/25/2017 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 STEFANO PETRI
Appeal 2016-001212
Application 13/054,817
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request for Rehearing (“Request”), dated
October 11, 2017, of our Decision, mailed August 11, 2017 (“Decision”),
wherein we affirmed the Examiner’s § 103 rejection of all appealed claims,
that is, claims 1—20.
Appellant’s Request is limited to the dependent claims; they argue
that the Board “failed to consider” the dependent claims and the “arguments
associated” therewith (Request 1).
We have reconsidered our Decision of August 11, 2017, in light of
Appellant’s comments in the Request for Rehearing, and we find no error in
the disposition of the § 103 rejection with respect to the dependent claims.
Appeal 2016-001212
Application 13/054,817
As Appellant points out, we stated that “while Appellant separately
addresses many of the claims, these arguments are redundant” (Decision 2,
3; Request 2). Appellant admits that the arguments “overlap” but state that,
for example, dependent claims 11 and 15 were separately argued to point out
that the applied prior art did not suggest a glue pattern comprising a plurality
of glue strips (Request 2). First, this does not point out error in the
Examiner’s position that it would have been obvious in view of the applied
prior art to vary the shape of the glue pattern (inclusive of glue strips) and/or
the press pattern (e.g., Final Action 5; Ans. 4; Decision generally).
Appellant has also not persuaded us that using a plurality of glue strips is
significant (i.e., critical) to their invention, such that it is not merely an
obvious change in shape under In re Dailey, 357 F.2d 669 (CCPA 1966).
Second, merely restating various claim limitations and asserting that
the cited references fail to teach these limitations are considered to be
nothing more than general allegations of patentability and are not considered
separate patentability arguments. See 37 C.F.R. § 41.37(c)(l)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Accordingly, no persuasive merit is present in Appellant’s argument
that our Decision “failed to consider each claim, particularly the dependent
claims” (Request 1).
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Appeal 2016-001212
Application 13/054,817
Thus, we decline to modify our decision to affirm the Examiner’s
§103 rejections of appealed claims 1—20, inclusive of dependent claims 2—6,
8-17, 19, and 20.
In conclusion, based on the foregoing, Appellant’s Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed August 11, 2017, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52 (a)(1).
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)(v).
DENIED
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