2018008425 (P.T.A.B. Jun. 23, 2020)

Siemens Aktiengesellschaft

Patent Trials and Appeals BoardJun 23, 2020

2018008425 (P.T.A.B. Jun. 23, 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. 14/732,202 06/05/2015 Jochen Bretschneider BRETSCHNEIDER-11 1426 20151 7590 06/23/2020 HENRY M FEIEREISEN, LLC HENRY M FEIEREISEN 35 WEST 35TH STREET SUITE 900 NEW YORK, NY 10001 EXAMINER DANG, HUNG H ART UNIT PAPER NUMBER 2117 NOTIFICATION DATE DELIVERY MODE 06/23/2020 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): INFO@FEIEREISENLLC.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOCHEN BRETSCHNEIDER and THOMAS PITZ Appeal 2018-008425 Application 14/732,202 Technology Center 2100 Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 timely requests rehearing under 37 C.F.R. § 41.50(b)(2) (“Request” or “Req. Reh’g”) for reconsideration of our Decision on Appeal mailed March 13, 2020 (“Decision” or “Dec.”). The Decision affirmed the Examiner’s rejection of claims 1 and 3–9 under 35 U.S.C. § 103. Dec. 9. We have considered Appellant’s Request, but we do not modify our opinion. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SIEMENS AKTIENGESELLSCHAFT. Appeal Br. 2. Appeal 2018-008425 Application 14/732,202 2 DISCUSSION Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appellant argues “the Decision introduces an undesignated new ground of rejection by stating that the Roders reference relied upon by the Examiner is WO 2016/078781, dated May 26, 2016,” rather than DE10343785A1. Req. Reh’g 2. Appellant notes that “[t]he specific portions of Roders relied upon in the Decision are from Roders DE10343785A1 and not from Roders WO 2016/078781,” but argues that the Decision’s identification of Roders as WO 2016/078781 (Decision 3) causes “a great deal of uncertainty that enables appellant only to speculate as to the actual basis of the Decision.” Id. We deny Appellant’s Request for Rehearing. We do not agree that our Decision was an undesignated new ground of rejection. We are mindful that the Board may not rely on “new facts and rationales not previously raised to the applicant by the Examiner” where “such facts change[] the thrust of the rejection.” In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). In the Decision, however, the Board did not find new facts or alter the Examiner’s reasoning. As noted by Appellant, “[t]he specific portions of Roders relied upon in the Decision are from Roders DE10343785A1 and not from Roders WO 2016/078781.” Req. Reh’g 2. We confirm that all citations to Roders in the Decision are to DE10343785A1. The Decision’s identification of Roders in the REFERENCES section of the Opinion as WO 2016/078781 is merely a clerical error. Decision 3. We correct that Appeal 2018-008425 Application 14/732,202 3 clerical error here by confirming that all portions of Roders identified and relied upon in the Decision are from DE10343785A1, consistent with the Examiner’s rejection. Accordingly, Appellant has not established that our Decision was an undesignated new ground of rejection because the Decision does not rely on new facts or rationales not previously raised by the Examiner. Appellant’s Request for Rehearing is denied. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 3–5, 7–9 103 Roders, Higasayama 1, 3–5, 7–9 6 103 Roders, Higasayama, Kimura 6 Overall Outcome 1, 3–9 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 3–5, 7–9 103 Roders, Higasayama 1, 3–5, 7–9 6 103 Roders, Higasayama, Kimura 6 Overall Outcome 1, 3–9 DENIED