Matthias E. Schuele

Patent Trials and Appeals Board

Feb 3, 2020

14566800 - (R) (P.T.A.B. Feb. 3, 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.
14/566,800 12/11/2014 Matthias E. Schuele 0101546.0610812 9775
26874 7590 02/03/2020
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
02/03/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATTHIAS E. SCHUELE
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Appeal 2019-002738
Application 14/566,800
Technology Center 3700
________________

Before DANIELS. SONG, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated
January 14, 2020 of the Decision on Appeal mailed November 14, 2019
(“Decision”). This Decision affirmed in part the Examiner’s rejections of
claims 1, 4–12, 14–18, 21, and 22.2 See Decision 10. Appellant “submits
that this Request for Rehearing should be granted as the [] Decision is in-
part based on certain misapprehended or overlooked aspects by the Board.”
Req. Reh’g 1.
Upon consideration of Appellant’s Request, we do not modify our
opinion.
A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.” In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “pro med
instruments GmbH.” Appeal Br. 2.
2 The rejection of claims 1, 4–8, 17, 18, and 21 was affirmed. The rejections
of claims 9–12, 14–16, and 22 were reversed. See Decision 10.
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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.
ANALYSIS
Appellant initially focuses on the claim language “a second rod,
comprising an elongated curved shape.” Req. Reh’g 1. Appellant contends
that the Board treated the phrase “elongated curved shape” as “including
coordinate adjectives when that is not the case” as per The Chicago Manual
of Style3 (hereinafter “Chicago Style”). Req. Reh’g 1, 2. Appellant explains
that coordinate adjectives are adjectives that “are either separated by a
comma or the conjunction ‘and’.” Req. Reh’g 2 (referencing Chicago Style,
Chapter 5 Grammar and Usage, Section 5.91 Coordinate Adjectives).
Appellant provides an example, i.e., “‘the smart, funny comedian’ uses
coordinate adjectives and expresses that the comedian is smart and that the
comedian is funny.” Req. Reh’g 2. However, the above claim language
lacks a comma and the conjunction “and,” and thus the claimed phrase does
not include coordinate adjectives. Instead, according to Appellant, the
claimed phrase employs adjectives that “are considered cumulative such that
one adjective [describes] the combination of the other adjective plus the
noun.” Req. Reh’g 2. An example of such is provided in the Chicago Style,
i.e., “the phrase ‘the lethargic soccer player’ that describes a soccer player
that is lethargic.” Req. Reh’g 2.
“Appellant notes the purposeful lack of any comma or conjunction
‘and’ within [the] claimed phrase” “an elongated curved shape.” Req. Reh’g
2. This is because the “claimed phrase describes a second rod that has a

3 THE CHICAGO MANUAL OF STYLE, 17th ed., available at
https://www.chicagomanualofstyle.org/book/edl7/part2/ch05/psec091.html.
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curved shape but that curved shape is elongated.” Req. Reh’g 2. Appellant
contrasts that interpretation with how the Board treated this claimed phrase,
i.e., “an elongated and curved shape.” Req. Reh’g 3. In other words,
Appellant argues the Board misapprehended or overlooked the scope of
claim 1 by basing its decision “on Olsen by pointing to a rod that is
elongated but straight [i.e., item 12], and then modifying that rod by affixing
a non-elongated angled joint member [i.e., item 540].” Req. Reh’g 3.
However, Appellant’s statement above regarding “non-elongated
angled joint member” 540 of Olsen is not a correct characterization of that
member. For clarity, Olsen’s joint members 540 and 570 are replicated
below.

The above Figures 20 and 22 of Olsen illustrate angled joint members
540 and 570 respectively which can be interchanged with each other
depending on the desired end terminus. See Olsen ¶¶ 40, 42, 121, 123.
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We have been instructed by our reviewing court that “[d]escription for
purposes of anticipation can be by drawings alone as well as by words.” In
re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). On the one hand, we have
been instructed that “patent drawings do not define the precise proportions
of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 956 (Fed. Cir. 2000). On the other hand,
we have also been instructed that our reviewing court “did not mean that
things patent drawings show clearly are to be disregarded.” Mraz, 455 F.2d
at 1072. In the record before us, we understand that Olsen is silent as to the
issue of “precise proportions of the elements,” but also that the depiction of
angled joint member 540 above clearly illustrates this item as having a
length, width, and depth. Hence, because there is length between the two
terminus points, there appears to be no basis for Appellant’s above assertion
that angled member 540 is “non-elongated.”4
In further support of the elongated nature of angled joint member 540,
comparable member 570 is described as comprising “an elongate cylindrical
body” and “wherein the elongate member is bent between the grooves” 574,
576. Olsen ¶ 123. Referenced joint member 540 is depicted in the above
figures as having a similar construction, and thus may likewise be
reasonably said to comprise “an elongate cylindrical body” that is bent
between its opposite ends. Moreover, as noted in the Decision, “the claim
limitation at issue recites ‘a second rod, comprising an elongated curved

4 Appellant’s Specification employs the term “elongated” in its ordinary and
customary sense, and does not provide a definition contrary to such usage.
For example, a support rest “having a shape that is elongated with a curve”
and “a curved elongated member having an egg shaped profile.” Spec. ¶ 43.
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shape,’ and does not require the second rod to be curved in its entirety.”
Decision 4.
Thus, even if the limitation in question is interpreted to mean the
recited curved shape is elongated, as advocated by the Appellant (see Req.
Reh’g 2), this does not undermine or weaken the teachings of Olsen. Nor
does such interpretation compromise the Examiner’s finding that Olsen
discloses the limitation, “a second rod, comprising an elongated curved
shape.” See Final Act. 3.
Accordingly, and based on the above, we do not modify our decision
on this point.
Appellant also presented a second instance of where the Board is
believed to have misapprehended or overlooked an argument in rendering its
Decision. See Req. Reh’g 5. Here, Appellant addresses the claim language
“wherein the first rod is rotatably adjustable about the first axis of rotation
and the second axis of rotation.” Req. Reh’g 5. Appellant contends the
Board failed to note that rotation is about both axes (“and”), not just one or
the other. See Req. Reh’g 6.
We disagree. During the discussion of this rotation matter, the
Decision specifically recited a passage from Paragraph 45 of Olsen. See
Decision 7. This passage reads as follows: “FIG. 1 shows an adjustable
splint 10 that is adjustable in more than one plane or axis, as illustrated by
the arrows therein.” The Decision also referenced Olsen Paragraph 51 and
Figure 8, neither of which Appellant addresses in the current Request.5

5 Paragraph 51 of Olsen (addressing Figure 1) states, “(v) main body 14 can
be twisted along one axis with respect to main body 12 (see arrows 44, 46);
and (vi) main body 14 can be twisted, along another axis with respect to
main body 12 (see arrows 47, 48).”
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Accordingly, Appellant’s contention regarding a lack of any rotation about
multiple axes, or that the Board misapprehended or overlooked this
argument when rendering its Decision, is not persuasive. We do not modify
our decision on this point.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
the Board reconsidered its Decision in light of the statements made in this
Request, but is denied with respect to the Board making any modification to
the Decision.
DENIED