2020006655 (P.T.A.B. Sep. 14, 2021)

NEXANS

Patent Trials and Appeals BoardSep 14, 2021

2020006655 (P.T.A.B. Sep. 14, 2021)

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. 14/880,328 10/12/2015 Gerhard Lindner 979-815 4889 39600 7590 09/14/2021 SOFER & HAROUN LLP. 215 Lexington Avenue, Suite 1301 NEW YORK, NY 10016 EXAMINER MORRIS, TAYLOR L ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 09/14/2021 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): dockets@soferharoun.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERHARD LINDNER and HERMANN TEICHER Appeal 2020-006655 Application 14/880,328 Technology Center 3600 Before JENNIFER D. BAHR, DANIEL S. SONG, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE The Appellant requests reconsideration (hereinafter “Request” or “Req.”) under 37 C.F.R. § 41.52 of our Decision mailed July 1, 2021 (“Decision”), affirming the Examiner’s rejections of claims 1–3. We DENY the Appellant’s request. OPINION The Appellant argues that the Board “misapprehended the meaning and full breadth of the Appellants argument that Suzuki can[]not be modified by Brown as suggested” and misapprehended “the facts concerning Appeal 2020-006655 Application 14/880,328 2 the Suzuki reference and the applicable law for making such modifications as argued in the Appeal Brief.” Req. 4 (emphasis removed). The Appellant points out that in its Appeal Brief, it argued that the recitations of a “fastening element” that is bendable, and a stirrup, are “not disclosed or implied by or obvious from the structures in Suzuki (with or without Brown/Sakata)” and that “there is no motivation to combine the references as suggested based on the teachings of Brown and Suzuki themselves.” Req. 3 (quoting Appeal Br. 13–14, emphasis removed). Based on these arguments set forth in the Appeal Brief, the Appellant asserts that the Board overlooked or misapprehended the fact that the lever 40 of Suzuki “can[]not be extended even if Brown teachings are considered because the structure of Suzuki does not allow for such extension.” Req. 4 (emphasis removed). According to the Appellant, this is due to the fact that “there is no space above locking [lever] 40 for extension thereof to extend to be reached by a user. Rather, the stippled shading represented by clip element 14 is blocking any such modification.” Req. 6 (emphasis removed). Thus, the Appellant asserts that “if there was an attempt to redesign element 40 to form the modification proposed by the Examiner it would also require redesign of clip portion 14 in order to allow such space.” Req. 6 (emphasis removed). Similarly, the Appellant argues that the alleged “safety stirrup ‘S’ identified by the Examiner in Suzuki would not ever contact a lever, extended or otherwise, because there are intervening structures in Suzuki that would prevent this,” that is, “the stippled shaded area,” which prevents movement of locking lever 40 and precludes contact with the safety stirrup. Req. 4–6. Accordingly, the Appellant asserts that the proposed modification would render Suzuki unsatisfactory for its intended purpose and change its Appeal 2020-006655 Application 14/880,328 3 principle of operation, such that there is no teaching or motivation to modify the retainer clip of Suzuki as proposed in the rejection. Req. 6–7. The Appellant’s request is improper, and even if considered, unpersuasive. First, a Request for Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the original Decision. See 37 C.F.R. § 41.52. New arguments are improper except under certain circumstances. See id. (“Arguments not raised . . . are not permitted in the request for rehearing.”).) None of the identified circumstances are applicable in the present appeal. The Appellant does not direct us to, nor is it apparent to us, where in the Appeal Brief the Appellant relied upon “stippled shading” shown in Figure 8 of Suzuki to support its patentability arguments. The above-noted general arguments made in its Appeal Brief regarding the recited “fastening element” and the stirrup were not based on “stippled shading.” Thus, the Appellant fails to establish that the Board misapprehended its arguments, the Suzuki reference, or the applicable law, as the Appellant now asserts. Accordingly, the Appellant’s argument in the Request for Rehearing is new and improper. Even if the Appellant’s argument is not considered to be new, it is nonetheless unpersuasive because the “stippled shading” shown in Figure 8 of Suzuki is not depicting a cross section of a structure, but rather is simply depicting the surfaces of the retainer clip of Suzuki. In that regard, even cursory review of the figures of Suzuki shows that such stippling is used to depict all of the surfaces of the retainer clip. See Suzuki Figs. 1–8. In addition, the Appellant’s argument does not even make sense because if such stippling depicted a cross section of a material structure, the unlocking lever 40 would not be able to be deflected to allow for initial installation of Appeal 2020-006655 Application 14/880,328 4 the retainer clip on the receiving element 44. See Suzuki Fig. 8. Accordingly, it is clear that the “stippled shading” depicts surfaces that are not in the same plane as the unlocking lever 40 and the receiving element 44, which are illustrated in cross sectional views via cross-hatching. Therefore, in view of the above, it is apparent that the Appellant improperly presents new arguments in its Request for Rehearing, which are nonetheless unpersuasive. Accordingly, although we have considered the Decision in light of the Request, we decline to modify the Decision in any respect. CONCLUSION The Appellant’s request is denied. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C § Basis Denied Granted 1–3 103 Suzuki, Brown, Sakata 1–3 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3 103 Suzuki, Brown, Sakata 1–3 DENIED