Horst Burghardt. Minkofski

Patent Trials and Appeals Board

Aug 30, 2019

11265408 - (R) (P.T.A.B. Aug. 30, 2019)

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.
11/265,408 11/01/2005 Horst Burghardt Minkofski 5033
81650 7590 08/30/2019
Horst B. Minkofski
General Delivery, Station Fort Langley
Langley, BRITISH COLUMBIA V1M 2S6
CANADA
EXAMINER
MONIKANG, GEORGE C
ART UNIT PAPER NUMBER
2651
MAIL DATE DELIVERY MODE
08/30/2019 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 HORST BURGHARDT MINKOFSKI
____________

Appeal 2017-003994
Application 11/265,408
Technology Center 2600
____________

Before DEBRA K. STEPHENS, SHARON FENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a decision on Appellant’s Request for Rehearing (“Reh’g
Req.”) of our Decision on Appeal issued January 31, 2019 (“Decision on
Appeal” or “Dec.”). We have reviewed our Decision in view of the Request
for Rehearing, and have not found that the Request for Rehearing describes
points misapprehended or overlooked in that Decision. We, therefore,
decline to change the Decision.

37 C.F.R. § 41.52(a)(1) provides:
Appellant may file a single request for rehearing within two
months of the date of the original decision of the Board. . . .
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
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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. When a request
for rehearing is made, the Board shall render a decision on the
request for rehearing. The decision on the request for rehearing
is deemed to incorporate the earlier opinion reflecting its
decision for appeal, except for those portions specifically
withdrawn on rehearing, and is final for the purpose of judicial
review, except when noted otherwise in the decision on
rehearing.
Claim 1 is reproduced below with certain limitations emphasized.
1. A hermetically sealed enclosure having an internal pressure
ranging from atmospheric to a high vacuum and comprising a
force generating means for regulating a property of said
hermetically sealed enclosure,
said force generating means selected from the group consisting
of an electrostatic force generating means, and a strut force
generating means containing a transduction circuit, said
transduction circuit hermetically enclosed within said strut
force generating means,
and;
wherein said property is selected from the group consisting of a
thermal property, and a characteristic acoustic impedance,
so that said force generating means is effective to regulate said
thermal property, and said characteristic acoustic impedance.
Dec. 2.
We affirmed the Examiner’s rejection of claims 1–3 as unpatentable
over Ledonne (US 5,125,031; issued June 23, 1992) and Nakamura (US
2001/0005422 Al; pub. June 28, 2001) and the Examiner’s rejection of claim
5 as unpatentable over Ledonne, Nakamura, and Wang et al. (US
2005/0089184 Al; pub. Apr. 28, 2005) and reversed the Examiner’s rejection
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of claim 4 as unpatentable over Ledonne, Nakamura, and Parker et al. (US
2005/0094837 Al; pub. May 5, 2005). Dec. 3–12.
Appellant does not describe with particularity the points “believed to
have been misapprehended or overlooked by the Board.” We note that the
Appellant is a pro se inventor. In this instance, we examine Appellant’s
arguments to discern whether they indicate what is believed to have been
misapprehended or overlooked.
Appellant’s comments all appear to relate to the combination of
Ledonne and Nakamura used in each rejection. Final Action 3–11.
Appellant asserts that “the Board’s decision does not fully contemplate”
operability of the Examiner’s proposed combination and “ask[s] that the
Board reconsider its position” on the broadest reasonable interpretation of
claim terms “effective to” and “regulate.” Reh’g Req. 3, 5–6. Appellant
argues that “prior art embodiments are basically inoperative when viewed
under the ‘effective to’ standard.” Id. at 3. Appellant asserts that the
Decision on Appeal did “not fully contemplate that the operability of the
Examiners embodiments is based on marginal or unproven and
undocumented functioning.” Id. 3, 7–9. Appellant further argues that even
if “at the margin” some characteristic acoustic impedance “may be created”
in the combination of prior art used in the Examiner’s rejection, which
Appellant argues is speculative, the effect would be marginal. Id. at 4.
Our Decision on Appeal did address the operability of the proposed
combination and the broadest reasonable interpretation of “effective to
regulate.” Dec. 4–6 (citing the change in the shape of the speaker box
operating to change characteristic acoustic impedance, and discussing the
interpretation of “effective to” and “effective to regulate”). Our Decision on
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Appeal also specifically noted that “the claim term does not require the
argued degree of effectiveness” and that “[w]e do not agree that the broadest
reasonable interpretation of [“effective to regulate”] should be narrowed . . .
to require a permanent change.” Id. at 6.
Appellant further argues the Examiner has not proven the change in
volume that the Examiner asserts. Reh’g Req. at 4, 9 (“in the absence of
proof supporting the Examiner’s claim of a change in volume, the
Examiner’s claim should be considered moot.”). Our Decision on Appeal
specifically discussed Appellant’s admission (Appeal Br. 11) of a change
(described as “momentary”) in the shape of the speaker box, resulting in a
change in volume and thus, a change in the characteristic acoustic
impedance of the speaker box. Dec. 5. We note that, in view of the broadest
reasonable interpretation of “effective to regulate” discussed above, claim 1
does not specify a duration for the regulating of the characteristic acoustic
impedance; therefore, the claim does not exclude a momentary change in
volume resulting in a temporary change of characteristic acoustic
impedance.
Appellant discusses equivalents and cites the Doctrine of Equivalents
Reh’g Req. 7–8. Appellant argues that the Board has “not paid overmuch
attention to” “point 19” of the Appeal Brief, relating to the prior art
reference Ledonne. Id. at 7. Appellant describes that “Ledonne is shown as
having four elements (R, FS, K, S), while claim 1 shows only three (R, FE,
E) [and] the speaker of Ledonne, K, has not been proven to be an equivalent
of the electrostatic force generating means of claim 1 (FE).” Id. The Appeal
Brief begins with a set of numbered paragraphs, but it appears from context
Appellant is not referring to paragraph 19 but rather to an argument relating
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to numbered paragraphs 28–33. Appeal Br. 10, 13–14. These numbered
paragraphs include a chart, comparing Ledonne to claim 1, which appears to
track the discussion in the Rehearing Request. Id. at 13. Appellant’s
arguments do not explain how or where we have misapprehended or
overlooked the applicability of the Doctrine of Equivalents, which generally
relates to infringement analysis rather than patentability. No means-plus-
function elements have been identified which might also be a source for an
argument relating to equivalence. See Reply Br. 6; 35 U.S.C. 112(6); MPEP
§§ 2181–2183. We note that the Examiner uses a combination of Nakamura
and Ledonne in the rejection of claim 1 and that we addressed the Nakamura
speaker as a force generating means in the Decision. Dec. 5–6.
Appellant presents arguments directed to the propriety of the
motivation to combine the prior art. Reh’g Req. 5, 7–8. However, we
addressed this in our Decision on Appeal, and Appellant does not describe
what was overlooked or misapprehended in that portion of the Decision. See
Dec. 7–8.
Lastly, we note Appellant’s remark:
One has tried to make this case, and it has taken quite a while and
used up a lot of the allotted patent term. So, in closing, one would
like to ask the board for an extension of time, or, if that is beyond
the scope of this writing, perhaps a recommendation for an
extension of time to the appropriate department.
Reh’g Req. 10. We note that no extensions of patent term are available from
the Board and that patent term is governed by 35 U.S.C. § 154(b), which
does provide for patent term adjustment in certain circumstances “if the
issue of an original patent is delayed due to the failure of the Patent and
Trademark Office to” perform certain activities in a timely manner. See
MPEP §§ 2730, 2733. Appellant’s attention is directed to the Pro Se
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Application 11/265,408

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Assistance Program (https://www.uspto.gov/patents-getting-started/using-
legal-services/pro-se-assistance-program), and in particular, to their contact
information ––1-866-767-3848 and innovationdevelopment@uspto.gov.

DECISION
In view of the foregoing discussion, we deny Appellant’s Request for
Rehearing.
Pursuant to 37 C.F.R. § 1.136(a)(1)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.

REQUEST FOR REHEARING DENIED