10966733 (B.P.A.I. Jun. 21, 2012)

Ex Parte Schmidt

Board of Patent Appeals and InterferencesJun 21, 2012

10966733 (B.P.A.I. Jun. 21, 2012)

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. 10/966,733 10/15/2004 G. Gerry Schmidt 729290-043 7111 21836 7590 06/22/2012 HENRICKS SLAVIN AND HOLMES LLP SUITE 200 840 APOLLO STREET EL SEGUNDO, CA 90245 EXAMINER ALIE, GHASSEM ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 06/22/2012 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 G. GERRY SCHMIDT ____________________ Appeal 2009-012930 Application 10/966,733 Technology Center 3700 ____________________ Before JOHN C. KERINS, CHARLES N. GREENHUT and JAMES P. CALVE, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-012930 Application 10/966,733 2 Appellant has filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of our Decision on Appeal dated April 30, 2012 (“Decision”) affirming the rejections of claims 1 and 3-17 under 35 U.S.C. § 103(a).1 We have jurisdiction over the Request under 35 U.S.C. § 6(b). Appellant first maintains that, “[t]o the extent that the Examiner’s articulated reason is dependent upon what appears to be an improper application of inherency principles [footnote omitted], Appellant respectfully asserts that it has stated with particularity at least one point believed to have been misapprehended or overlooked by the Board.” Request 3. The Decision’s use of the expression “inherent characteristics” (Decision 5), in describing a statement made by the Examiner which was contested by Appellant, was not intended to mean that the Examiner was relying on principles of inherency in the grounds for rejection. The passage in which the term “inherent” appears perhaps would have been better worded as, “it appears that what follows is a statement of characteristics of the Gringer device resulting from the Examiner’s proposed modifications in view of Ho and Blow, and not in view of Blow alone.” The point intended to be made was that Appellant’s arguments directed only to the teachings of Blow were not persuasive, in that the Examiner’s position took into account 1 The rejections were under 35 U.S.C. § 103(a): claims 1 and 3-16 were rejected as being unpatentable over Gringer (US 6,058,607, issued May 9, 2000) in view of Ho (US 2003/0196331 A1, published Oct. 23, 2003) and Blow (US 1,507,043, issued Sep. 2, 1924); and claim 17 was rejected as being unpatentable over Gringer in view of Ho, Blow and Collins (US 5,511,311, issued Apr. 30, 1996). Appeal 2009-012930 Application 10/966,733 3 the teachings of Ho as well, in combination with Gringer. We are not persuaded that we misapprehended or overlooked anything in this regard. Appellant further argues that the findings underlying the conclusion of obviousness were in error on the basis that the Examiner asserted that the Ho patent teaches “another or third engaging portion,” whereas Ho teaches “but a single ‘engaging portion.’” Request 4, citing to Ans. 7-8; Request 5. This argument fails to establish that we overlooked or misapprehended any points that were argued on appeal. The argument simply was not made in the Appeal Brief or in the Reply Brief. “Arguments not raised in the briefs before the Board . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R. § 41.52(a)(1). Appellant has not shown good cause as to why this new argument is entitled to consideration under 37 C.F.R. § 41.52(a)(2), and 37 C.F.R. § 41.52(a)(3), directed to new grounds of rejection, does not apply. Moreover, the Examiner’s specific finding relative to the Ho patent, after noting that Gringer did not disclose an engaging portion located on the top of the carrier, was that, “the use of a knife including a housing having an opening in the top and a blade carrier having an engaging portion on the top extending from the opening is well known in the art such as taught by Ho. Ans. 4. The Examiner’s reference to “another or third engaging portion” is in reference to adding a further engaging portion to the Gringer device, and not that Ho itself teaches three engaging portions. Ans. 8. Again, we are not persuaded that we misapprehended or overlooked anything in this regard. Appellant additionally presents discussion and arguments based upon various structural aspects of each of the Gringer, Ho and Blow devices, noting that “none of the references . . . describe a blade carrier with multiple Appeal 2009-012930 Application 10/966,733 4 engaging portions, one of which is at a top side and another at either a left or right side of the cutter. None of these references describe a blade carrier with more than two engaging portions.” Request 5. These arguments were not made previously by Appellant, and thus do not point to anything that we may have misapprehended or overlooked. The Appeal Brief, aside from providing a brief summary of certain characteristics of the devices in each of Gringer, Ho and Blow, is directed solely to alleged shortcomings in the teachings of Blow. The same is true of the Reply Brief. Appellant argues that the references, whether taken alone or in combination, do not disclose or suggest a blade carrier including three engaging portions “that are positioned at a distal end of the blade carrier,” as set forth in claim 1. Request 6-10. Once again, this argument is made for the first time in the Request, and does not persuade us that we misapprehended or overlooked any argument actually made by Appellant in the Appeal Brief or the Reply Brief. Finally, Appellant takes issue with our characterization of the Examiner’s reliance on the decision in St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977)(cert. den’d), as an alternative rationale for the conclusion of obviousness. We characterized it as such because we viewed the Grounds of Rejection (Ans. 3-5) and the portions of the Response to Argument (Ans. 7-8) preceding the discussion of that case as presenting an articulated reason to combine the teachings that was supported by rational underpinnings, and that the proposed combination rendered obvious the subject matter of claim 1 and the claims depending therefrom. Decision 6. Nothing more was required in order for us to affirm the rejections. Appeal 2009-012930 Application 10/966,733 5 DECISION We have carefully considered the arguments presented in Appellant’s Request for Rehearing. We are not persuaded that we misapprehended or overlooked any arguments raised by Appellant in the Appeal Brief and Reply Brief. Accordingly, the Request is denied. 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) . REQUEST DENIED Klh