Ex Parte Soinila et al

Patent Trial and Appeal Board

Aug 31, 2016

14122664 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/122,664 02/19/2014 Erno Soinila
152 7590 08/31/2016
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
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.
9331.0003 3173
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
MAILDATE DELIVERY MODE
08/31/2016 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 ERNO SOINILA, TUOMAS PIHLAJAMAKI, SVEN BOSSUYT,
and HANNU HANNINEN
Appeal2016-002899
Application 14/122,664
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request, filed August 23, 2016, for rehearing
of our Decision dated June 23, 2016.
Appellants argue that the Board's reliance on teachings in Gagliano
not relied upon by the Examiner in order to determine that the claimed
subject matter would have been obvious constitutes a new ground of
rejection (Req. 2-9). Appellants contend that the Board's reliance on
Gagliano' s Figure 2 as part of the combined teachings of Soinila and
Gagliano is being presented for the first time (App. Br. 4--5). Appellants
contend that the Board's reliance on Gagliano's Figure 2 embodiment
changes the thrust of the Examiner's rejection, which is based on Soinila
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Appeal2016-002899
Application 14/122,664
teaching a hearth and mold that are moveable as a single unit into the
vacuum chamber and out from the chamber (Req. 3, 5).
Although the Examiner's obviousness analysis concludes that it would
have been obvious to modify the invention of Soinila in view of Gagliano
and Fan to have an opening in the bottom side of the casing because of the
limited number of places to put the opening for the chamber and to optimize
the placement of the opening (Ans. 4), the Examiner does not explicitly cite
to Gagliano' s Figure 2 or provide the level of reasoning that the Board
provided in combining Soinila and Gagliano (Dec. 3-6). Because we find
that the combined teachings of Soinila, Gagliano and Fan would have
rendered obvious the subject matter of claim 1, we maintain our affirmance
of the Examiner's rejection. Because of our reliance on Gagliano's Figure 2
in the Decision, however, we designate our affirmance as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) to afford Appellants an
opportunity to respond.
For the above reasons, we adhere to our decision to affirm the
Examiner's rejection. Appellants' request for rehearing is granted to the
extent that we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b). Under the circumstances presented in this
appeal, Appellants may file an additional request for rehearing of our newly
designated new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F .R. § 41.50(b ), which provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
That section also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION:
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Appeal2016-002899
Application 14/122,664
must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
37 C.F.R. § 41.50(b).
GRANTED
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