14944574 - (R) (P.T.A.B. Oct. 28, 2020)

Frank Levy et al.

Patent Trials and Appeals BoardOct 28, 2020

14944574 - (R) (P.T.A.B. Oct. 28, 2020)

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. 14/944,574 11/18/2015 Frank Levy LEVY-011 3479 21884 7590 10/28/2020 WELSH FLAXMAN & GITLER LLC 1451 Dolley Madison Blvd., Suite 210 McLean, VA 22101 EXAMINER DARB, HAMZA A. ART UNIT PAPER NUMBER 3783 MAIL DATE DELIVERY MODE 10/28/2020 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 FRANK LEVY and KIMBERLEY LEVY ____________________ Appeal 2020-000447 Application 14/944,574 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE On September 8, 2020, Appellant filed a Request for Rehearing (hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 of the Decision on Appeal (hereinafter “Decision” or “Dec.”) dated July 13, 2020. In the Decision, the Board affirmed a rejection of claims 1, 3–5, 7, and 8 under 35 U.S.C. § 103 as unpatentable over Binard,1 Levy 1,2 and Levy 2,3 and a rejection of claim 12 under 35 U.S.C. § 103 as unpatentable over 1 US 3,858,572 2 US 2009/0318890 A1 3 US 2012/0065502 A1 Appeal 2020-000447 Application 14/944,574 2 Binard, Levy 1, Levy 2, and Matsuda.4 For the reasons discussed below, we deny the Request. REQUIREMENTS FOR REQUEST FOR REHEARING A Request for Rehearing must comply with the following requirements: The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. 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. 37 C.F.R. § 41.52(a)(1). For example, “Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.” 37 C.F.R. § 41.52(a)(2). However, a Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief or in the Reply Brief. Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. OPINION In the Request, Appellant asserts that “[r]ecent cases applying KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) in obviousness determinations have made clear that it is not simply enough to find the various elements of a claim. Rather, there must be a reason supported by rational underpinnings for modifying a base reference.” Req. Reh’g 1. Appellant cites Federal Circuit cases Personal Web Technologies, LLC v. 4 US 2007/0282296 A1 Appeal 2020-000447 Application 14/944,574 3 Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) and In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) and asserts that “it is not enough that Levy 1 and Levy 2 disclose various elements of the claimed invention. Rather, there must be a reason to apply the teachings of Levy 1 and Levy 2 to Binard.” Req. Reh’g 2. In particular, Appellant asserts that [t]he Examiner’s rationale “for the purpose of choosing a standard size cartridge and using a well-known valve to secure the gas cylinder” does not rise to the level of providing a well- reasoned rationale for modifying Binard. Rather, it appears to make a broad-based statement that because cartridges such as those disclosed in Levy 1 are known it would be obvious to integrate them into Binard’s device. Id. at 3 (quoting Final Act. 4). Appellant also asserts that “[t]he Examiner’s rationale ‘for the purpose of controlling the precise dosage of CO2 and preventing a deadly dose’ also does not rise to the level of provid[ing] a well-reasoned rationale for modifying Binard. Rather, it appears to make a contrived statement developed in order to merely substantiate a rejection.” Id. at 3–4 (quoting Final Act. 5). The above arguments do not identify with particularity any points that our Decision misapprehended or overlooked, as required by 37 C.F.R. § 41.52(a)(1). Appellant does not include any citations to the Decision, much less allege that any of the points raised in the briefing were misapprehended or overlooked by the Board. Instead, the above assertions are new arguments based on Federal Circuit decisions cited for the first time in the Request. Req. Reh’g 2. Although 37 C.F.R. § 41.52(a)(2) permits new arguments on rehearing based on recent decisions of the Board or Federal Court, the newly-cited Federal Circuit cases were decided in 2017, whereas the record before us shows that Appellant’s Appeal Brief was filed Appeal 2020-000447 Application 14/944,574 4 May 28, 2019. In other words, these cases are not recent, and Appellant has not set forth any reason why these cases and associated arguments could not have been presented in the Appeal Brief. Accordingly, these arguments are untimely. Appellant also argues that “there is no reason, other than impermissible hindsight, to believe that one of ordinary skill in the art would have been motivated based upon Levy 2 to replace the system of Binard as suggested by the Examiner.” Req. Reh’g 4 (citing Reply Br. 2). This assertion simply rehashes the hindsight argument presented in the Appeal Brief and Reply Brief (see Appeal Br. 10; Reply Br. 2) and is not persuasive. As pointed out on pages 10–11 of the Decision, Appellant does not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction is proper.”). For the above reasons, we are unpersuaded that the Board misapprehended or overlooked Appellant’s arguments or otherwise erred in sustaining the rejections of claims 1, 3–5, 7, 8, and 12 under 35 U.S.C. § 103. Accordingly, Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the Decision. Appeal 2020-000447 Application 14/944,574 5 CONCLUSION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3–5, 7, 8 103 Binard, Levy 1, Levy 2 1, 3–5, 7, 8 12 103 Binard, Levy 1, Levy 2, Matsuda 12 Overall Outcome 1, 3–5, 7, 8, 12 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7, 8 103 Binard, Levy 1, Levy 2 1, 3–5, 7, 8 12 103 Binard, Levy 1, Levy 2, Matsuda 12 Overall Outcome 1, 3–5, 7, 8, 12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED