Wednesday, September 23, 2015

PTAB oddly grants re-hearing in 90/012,087

The PTAB decision states the law on re-hearing:

A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. 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. See 37 C.F.R. § 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an Applicant dissatisfied with 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. Appellant seeks a rehearing arguing the Board overlooked discouragement for the asserted combinations. Req. Reh’g. 2.

Then, PTAB observes

Appellant’s request is improper because, although characterizing the basis as a point overlooked, it is merely an expression of disagreement with our Decision in connection with whether the prior art teaches away from the applied combination of prior art references. In particular Appellant “submits that the Examiner and Board overlooked the fact that the Hayduke reference when viewed in its entirety expressly teaches away from the proposed combination with Hartmann and the proposed modification.” Req. Reh’g. 2. Appellant takes issue with our prior Decision, contending there is no requirement that Appellant establish that Hayduke cannot have an aperture to demonstrate Hayduke teaches away from the modification in view of the teachings of Hartmann, only that Hayduke discouraged the aperture. Id. In support of a teaching away argument, Appellant contends Figure 9 and Column 9, line 64 to Column 10, line 15 of Hayduke would be understood to require the absence of screw holes in cover plate 90. Req. Reh’g 3–4. According to Appellant, “[t]he proposed combination would provide direct access to the box behind back plate 4. Therefore, the proposed modification would not enable ‘only the outlets with the female receptacles for receiving plugs remain visible.’” Id. at 5. Although we consider Appellant’s Request to amount to no more than an improper expression of dissatisfaction with a Board Decision, rather than an appropriate identification of points believed to have been misapprehended or overlooked, we address the specifics of the alleged errors as follows


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