11778681 - (R) (P.T.A.B. Jul. 11, 2014)

Ex Parte Schlichting et al

Patent Trials and Appeals BoardJul 11, 2014

11778681 - (R) (P.T.A.B. Jul. 11, 2014)

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. 11/778,681 07/17/2007 Kevin W. Schlichting 67097-819; 4274 1873 54549 7590 07/11/2014 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER PRAGER, JESSE M ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 07/11/2014 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 KEVIN W. SCHLICHTING, MELVIN FRELING and JAMES O. HANSEN ____________ Appeal 2012-003981 Application 11/778,681 Technology Center 3700 ____________ Before: MICHAEL W. KIM, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants, on June 9, 2014, filed a Request for Rehearing (“Request”) in response to our Decision mailed April 8, 2014 (“Decision”). In the Decision, we affirmed the Examiner’s rejection of all pending claims as unpatentable over McCullough in combination with various secondary references. We do not modify our Decision. Appeal 2012-003981 Application 11/778,681 - 2 - ANALYSIS 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 (8th ed., Rev. 9, Aug. 2012)). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. The proper course for an applicant 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. In the instant case, Appellants inform us of their belief that we have “overlooked” several points in our Decision, including: 1. That the Examiner’s conclusion that claims 1–4, 8–10, 13, 14, and 21 would have been obvious is not supported by rational underpinning. Request 2. 2. That the Examiner’s finding of a reasonable expectation of success with respect to claims 1–4, 8–10, 13, 14, and 21 is not supported by facts. Id. 3. That the Examiner’s conclusion that claim 6 would have been obvious has no factual support. Id. at 2–3. 4. That Appellants provided a dictionary definition of a prefix used in naming chemical compounds. 5. That the Board’s finding that claim 6 is broad enough to read on McCullough’s bi-regional fibers constitutes a new ground of rejection. Appeal 2012-003981 Application 11/778,681 - 3 - Points 1–4 We did not overlook points 1–4 listed above. With respect to point 1, we discussed why the Examiner’s legal conclusion of obviousness was supported both on the facts and the law. Decision 5–6. With respect to point 2, we discussed the Examiner’s fact findings regarding reasonable expectation of success, citing In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) for the proposition that an Examiner may rely on his or her own scientific expertise in making a prima facie case of obviousness. Id. at 5. With respect to point 3, we discussed the Examiner’s rejection of claim 6, including the Examiner’s underlying basis for finding that McCullough’s silicone polymers are inorganic. Decision 6-7. With respect to point 4, we considered and discussed that Appellants submitted a dictionary definition of the prefix “organo-.” Id. Thus, we did not overlook the dictionary definition; we weighed the Examiner’s and Appellants’ respective positions and found the former more persuasive. Point 5 We disagree that mentioning McCullough’s bi-regional fibers amounts to a new ground of rejection. We sustained the rejection of claims 1–4, 8–10, 13, 14, and 21 on the grounds stated by the Examiner. Decision 3–6. In particular, we noted that it was undisputed that the combination of Li and McCullough disclose all of the limitations of claim 1. Id. at 3. As pointed out in the Decision, the only issue raised by Appellants with respect to the rejection of claim 1 relates to the Examiner’s finding of a reasonable expectation of success. Decision 3–4. In sustaining the rejection, we found that the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of Appeal 2012-003981 Application 11/778,681 - 4 - obviousness is well founded. Id. at 6. Our observation that claim 6 is also broad enough to read on McCullough’s bi-regional fibers is neither central nor essential to the Decision. Essentially, Appellants just rehash the same arguments that we previously considered and rejected. We are not persuaded that the Decision overlooked or misapprehended any matter or that we erred in affirming the Examiner's rejection of all pending claims under 35 U.S.C. § 103(a). DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in the Request, but is denied with respect to our making any modification to the Decision. Upon reconsideration, the rejection of claims 1–4 and 6–23 remains affirmed. 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) (2011). DENIED hh