Ex Parte Rasmussen et al

Patent Trial and Appeal Board

Aug 19, 2016

13258018 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/258,018 09/21/2011
32692 7590 08/23/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Jerald K. Rasmussen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
65032US005 4220
EXAMINER
SMITH, DUANE
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERALD K. RASMUSSEN, CARY A. KIPKE,
JAMES I. HEMBRE, and PETER D.WICKERT
Appeal2014-007204
Application 13/258,018
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request for Rehearing ("Req. Reh'g"), dated
July 25, 2016, of our Decision, mailed May 25, 2016 ("Decision"), wherein
we affirmed the Examiner's§ 103 rejections based on Lange1 of all appealed
claims 1--4.
Appellants' Request is limited to dependent claim 4. Contrary to
Appellants' position in the Request, Appellants did not previously present
any separate substantive arguments directed to dependent claim 4 (see, e.g.,
App. Br. 6, 8; Req. Reh'g 3) (merely pointing out that claim 4 recites "a
variety of specific hydrophobic monomers" and stating "The Patent Office
1 Lange et al., US 5,274,167, issued Dec. 28, 1993 ("Lange").
Appeal2014-007204
Application 13/258,018
has not shown" these monomers in the applied prior art). Cf 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. Because Lovin
did not provide such arguments, the Board did not err in refusing to
separately address claims 2-15, 17-24, and 31-34.")
Any new arguments and new facts relied upon in the Reply Brief (or
in a Request for Reconsideration) which were not raised or relied upon in the
Appeal Brief will not be considered by the Board unless good cause is
shown. 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal."). As also stated in 37 C.F.R. § 41.37(c)(l)(iv), "A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."
As stated in§ 41.52 (a)(l) "Arguments not raised, and Evidence not
previously relied upon, pursuant to§§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section." Appellants have not shown that any of
the exceptions apply here.
We have reconsidered our Decision of May 25, 2016, in light of
Appellants' comments in the Request for Rehearing, and we find no error in
the disposition of the§ 103 rejection, including dependent claim 4.
Accordingly, no persuasive merit is present in Appellants' argument
that our Decision "failed to separately consider the patentability of
2
Appeal2014-007204
Application 13/258,018
dependent claim 4" (Req. Reh'g 2) (emphasis omitted); since Appellants did
not provide any substantive argument directed to dependent claim 4.
Thus, we decline to modify our decision to affirm the Examiner's
§ 103 rejection of the appealed claims 1--4.
In conclusion, based on the foregoing, Appellants' 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 May 25, 2016, and is final for the purposes of judicial
review. See 37 C.F.R. 41.52 (a)(l).
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)(2010).
DENIED
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