RT-FILTERTECHNIK GMBH

Patent Trials and Appeals Board

Mar 2, 2022

2021004618 (P.T.A.B. Mar. 2, 2022)

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. 16/239,736 01/04/2019 Gerhard STEHLE 2018-1321 2060 513 7590 03/02/2022 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER JOHNSON, JERRY D ART UNIT PAPER NUMBER 3991 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GERHARD STEHLE and DIRK SCHOENFELD Appeal 2021-004618 Application 16/239,736 Reissue of US Patent 9,849,408 B2 Technology Center 3900 ____________ Before MICHELLE R. OSINSKI, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our Decision of December 2, 2021 (“Decision”), wherein we affirmed the Examiner’s rejection of claims 16-20 under 35 U.S.C. § 251. See Request for Rehearing filed January 21, 2022 (“Request”). The Request is denied. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies RT-FILTERTECHNIK GMBH as the real party in interest. Appeal Br. 1. Appeal 2021-004618 Application 16/239,736 2 DISCUSSION A request for rehearing must state with particularity the point(s) believed to have been misapprehended or overlooked. 37 C.F.R. § 41.52(a)(1). Appellant contends that the Board “misapprehended or overlooked at least three points in rendering the Decision . . . caus[ing] an incorrect affirmance.” Request 1. The first point Appellant argues is that their application supports the claimed step formation with filter folds having both a common height and a different height. Request 2. Appellant points to disclosure in the ’408 patent stating that “[t]he filter folds of the third group in the manner of a step formation have a common fold height, which fold height is different from the respective fold height of the filter folds of the two adjacent adjoining groups, and/or have in the manner of a curve formation mutually different fold heights.” Id. (quoting ’408 Patent 2:5-14 (emphases revised)). Appellant contends that this use of “and” in the “and/or” discloses a step formation having both a common fold height and a differing fold height. Id. Appellant did not explicitly set forth this specific argument in either the Appeal Brief or the Reply Brief, and we therefore did not misapprehend or overlook any argument to this end. Further, we decline to opine on this issue without the Examiner’s response. The second point Appellant argues is that claim 2 established that the non-common fold height in the pending claims was not surrendered during prosecution. Appeal Br. 3. Claim 2 recites the third group’s filter fold heights “produc[ing] a transition between the fold heights of the adjacent adjoining first and second individual groups.” Appellant contends that the requirement that claim 2 be canceled because it failed to include all of the Appeal 2021-004618 Application 16/239,736 3 limitations of claim 1 (from which it depended) establishes that the “transition” language of claim 2 meant “a progression of different fold heights in the third individual group.” Id. at 3. Appellant is thus equating the term “transition” with the curved or progressive fold height embodiment. Id. However, use of the term “transition” in Appellant’s Specification, when considered as a whole, does not support a meaning that is limited to Appellant’s progressive fold height embodiment. See Spec. 3:39-53, 5:5- 18, 6:25-30. Rather, Appellant’s Specification supports the term “transition” as covering both the progressive group 3 fold height configuration of Appellant’s Figure 2b and the common fold height configuration of prior art Figure 1b and Appellant’s Figure 4. See id. For this reason, we decline to limit the term “transition” to a progression of different fold heights, and we discern nothing misapprehended or overlooked in our Decision. The third point Appellant argues is that the Decision is contrary to Federal Circuit law. Request 3. Appellant contends that, during prosecution of the ’408 Patent, Appellant asserted patentability based on “each of the three individual groups” of filter folds. Id. at 4. To support this argument, Appellant cites to: (1) remarks made in a 2013 Amendment that Haberkamp differs from the claimed design in not having “the common fold heights in each of the respective first, second, and third individual groups” of filter folds; and (2) remarks made in a 2017 Response that the common fold height of “each fold in each of the respective three groups” patentably distinguished the claimed design over DE ’969. Id. Appellant contends that these patentability arguments amount to a “general or broad statement” that “is insufficient to provide the specific and intentional surrender of non- Appeal 2021-004618 Application 16/239,736 4 common fold heights in the third individual group.” Id. at 3-4 (citing Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1375 (Fed. Cir. 2010)). Like the first argued point discussed above, Appellant did not explicitly set forth this specific argument with the above evidence in either the Appeal Brief or the Reply Brief, despite citing to Guidant in the Reply Brief. See Reply Br. 4. We, therefore, did not misapprehend or overlook any argument to this end. For the foregoing reasons, Appellant’s Request is denied. SUMMARY Outcome of Decision Rehearing: Claims Rejected Basis Denied Granted 16-20 § 251, Recapture 16-20 Final Outcome of Appeal after Rehearing: Claims Rejected Basis Affirmed Reversed 16-20 § 251, Recapture 16-20 DENIED