Hurson, SteveDownload PDFPatent Trials and Appeals BoardNov 29, 201913572476 - (R) (P.T.A.B. Nov. 29, 2019) Copy Citation 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. 13/572,476 08/10/2012 Steve Hurson NOBELB.264C2 2546 20995 7590 11/29/2019 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER SAUNDERS, MATTHEW P ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVE HURSON ____________ Appeal 2017-004710 Application 13/572,476 Technology Center 3700 ____________ Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and PAUL J. KORNICZKY, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Steve Hurson (Appellant) filed a Request for Rehearing on August 5, 2019 (“Request”) pursuant to 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal mailed June 3, 2019 (“Decision”). The Decision affirmed the Examiner’s § 103 rejection of claims 1–8 as unpatentable over Bassett and Purga. See Decision 7. We have jurisdiction over the Request under 35 U.S.C. § 6(b). Turning to the Request, Appellant contends that the Board, by agreeing with the Examiner’s statements on page 7 of the Decision, misapprehended and/or overlooked several points in rendering the Decision. Request 2. In particular, Appellant argues that if the rationale for combining Purga with Bassett “is to improve guidance, one skilled in the art would Appeal 2017-004710 Application 13/572,476 2 have modified Bassett to include Purga’s guiding portion and thus, Bassett’s interlock portion would not extend all the way to the apical end as required in independent Claim 1.” Id. According to Appellant, “if the motivation to use Purga’s teachings is to provide for ‘improved guidance,’ then it would be unreasonable to eliminate the very feature (i.e., the guiding portion) of Purga that is disclosed as providing the guidance.” Id. at 2–3. We could not have apprehended an argument that was never presented in Appellant’s briefs. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs are not permitted in a request for rehearing except in limited circumstances set forth in 37 C.F.R. §§ 41.52(a)(2) through (a)(4), none of which apply here. As we indicated in our Decision, “Appellant’s argument emphasizes the distinction between the shape of Purga’s cylindrical section 22 and the hexagonal shape of the claimed interlock portion, but the Examiner relied on Bassett for disclosing a hexagonal interlock portion.” Decision 7. In rejecting claim 1, the Examiner found Bassett discloses all the limitations of the claim, “‘but fails to explicitly disclose where the ratio of the length of the conical portion and the length of the interlock portion is about 1:1.’” Id. at 5. (quoting Final Act. 5). According to the Examiner, “‘Bassett provides for both the claimed conical portion and the interlocking portion. The only limitation not provided for by Bassett was the claimed ratio between the conical portion and the interlocking portion.’” Id. at 6 (quoting Answer 4). “The Examiner relied on Purga for teaching the advantage of a longer insertion path by providing ‘a conical portion of an abutment having a one to one ratio with a portion below a conical portion.’” Appeal 2017-004710 Application 13/572,476 3 Id. at 6–7 (quoting Answer 4). In combining the teaching of the references, the Examiner concluded: it would have been obvious to one having ordinary skill in the art at the time of the invention to incorporate the ratio of the lengths of the conical portion and the interlocking portion being 1:1 as taught by Purga into the abutment portions as taught by Bassett for the purpose of providing the conical portion and the interlocking portion with a longer insertion path and better feedback when assembling a dental implant and avoiding wedging when assembling the abutment with an implant as taught by Purga (column 4 lines 50-58). Id. at 5–6 (quoting Final Act. 5). As such, the Examiner has made it clear that the rejection is not based upon bodily incorporation of Purga’s guiding portion into Bassett, such that one skilled in the art would have modified Bassett to include Purga’s guiding portion, as Appellant suggests. This argument is ineffective because it fails to address the rationale provided by the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Accordingly, Appellant’s request to reverse the rejection of claims 1– 8 under § 103 is denied. Appeal 2017-004710 Application 13/572,476 4 CONCLUSION Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of Appellant’s Request, but is denied in all other respects. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 1–8 103(a) Bassett, Purga 1–8 DENIED Copy with citationCopy as parenthetical citation