Datonics, LLC

Patent Trials and Appeals Board

Nov 19, 2020

2020001216 (P.T.A.B. Nov. 19, 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.
15/893,354 02/09/2018 Roy Shkedi 14 PP CON4 5057
26362 7590 11/19/2020
LOUIS J. HOFFMAN, P.C.
7689 East Paradise Lane
Suite 2
Scottsdale, AZ 85260
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
Louis@valuablepatents.com
donald@valuablepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROY SHKEDI
____________________

Appeal 2020-001216
Application 15/893,354
Technology Center 3600
____________________

Before MAHSHID D. SAADT, ALLEN R. MacDONALD, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing1 under 37 C.F.R. § 41.52(a),
requesting that we reconsider our Decision of September 21, 2020, wherein
we reversed the Examiner’s rejections of claims 34–61. We have
reconsidered our Decision in light of Appellant’s comments in the request,
and are not persuaded that we misapprehended or overlooked arguments
presented by Appellant.
Appellant’s request is denied.

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
Appeal 2020-001216
Application 15/893,354

2
Appellant’s Contentions & Interpretations of Law
A. Appellant interprets the law as follows:
Appellant’s undersigned counsel is not aware of any
decisions or rules barring rehearing after Board reversal of all
rejections, and challenges to a Board decision are possible for
any “applicant who is dissatisfied with the final decision of the”
PTAB (35 U.S.C. § 141(a), see also § 145), so it seems logical
that reconsideration is permissible.
Req. Reh’g 1 (emphasis added).2
B. Appellant contends that as to the Board Decision, the Board
“overlooked” (Req. Reh’g 1) Appellant’s asserted claim interpretation.
The Decision (pp. 7–8) agrees with appellant that “media
property entity” and “media property equipment” are different
terms, but (except for explaining the differing “context”) the
Decision does not construe those terms. Specifically, the Board
does not accept appellant’s request to hold that “media property
equipment” must be “part of the computer system that controls
an ad space viewed by a visitor, at least temporarily.” Nor does
the Board give any reason for denying that claim construction.
Req. Reh’g 2 (emphasis added).
The Board should not simply make a modest correction of
a single aspect of the Examiner’s claim construction then return
the case to the examiner to try again.
Req. Reh’g 5 (emphasis added).

2 35 U.S.C. § 141(a) EXAMINATIONS. –An applicant who is dissatisfied
with the final decision in an appeal to the Patent Trial and Appeal Board
under section 134(a) may appeal the Board’s decision to the United States
Court of Appeals for the Federal Circuit. By filing such an appeal, the
applicant waives his or her right to proceed under section 145.
Appeal 2020-001216
Application 15/893,354

3
C. Appellant contends that as to the Board Decision, the Board
“overlooked” (Req. Reh’g 1) Appellant’s arguments as to Jaschke:
The Decision, again, does not address what Jaschke
discloses (except to say that Jaschke refers to advertiser entities
and advertiser equipment with separate numerals). Again the
Decision just “recommends” that the examiner “reevaluate.”
With respect, the question of whether Jaschke teaches the
argued claim element has been fully briefed, and it is ripe for the
Board to decide.
Req. Reh’g 3–4 (emphasis added).
D. Appellant contends that as to the Board Decision, the Board
“overlooked” (Req. Reh’g 1) Appellant’s arguments as to combining
Jaschke and Kublickis:
Here again, the issue is fully briefed (see also slide 12),
but the Decision does not address the question. Worse, the
Decision “recommends” that the examiner “reevaluate the
appropriateness” of the same combination, without addressing
the fully briefed point that those references cannot logically be
combined. Again, this issue should be decided.
Req. Reh’g 5.
ANALYSIS
A.
As to Appellant’s interpretation of law, we disagree. Appellant
appears to be arguing that a rehearing or appeal is permitted in any reversal
of all rejections. This is not the law. Rather, rehearings as to Board
decisions are limited by a requirement that Appellant “state with
particularity the points believed to have been misapprehended or overlooked
by the Board.”
Appeal 2020-001216
Application 15/893,354

4
Further, Federal Circuit appeals as to Board decisions are limited by
the prudential rule “counseling against prevailing party appeals.” SkyHawke
Technologies, LLC v. Deca International Corp., 828 F.3d 1373, 1377
(2016). Although, in a unique factual scenario, the Federal Circuit may
permit such an appeal. Id. 828 F.3d at 1378 (“[T]he court in Priest [582
F.2d 33 (C.C.P.A. 1978)] was within its rights to depart from the ordinary
rule against prevailing party appeals but would not have been required to do
so.”).
B.
As to Appellant’s above contention B, we disagree. The panel has not
overlooked Appellant’s argument. Rather, we found Appellant’s claim
construction argument persuasive.
Contrary to Appellant’s rehearing argument, the Board did accept
Appellant’s request as to the claim construction. The Board quoted
extensively from Appellant’s Appeal Brief, including:
a media property (in the present context) can also be defined as
any equipment that controls an ad space viewed by a visitor
(Decision 8), then stated:
We agree with Appellant that the terms “media property entity”
and “media property equipment” are distinct.
(Decision 7) and then concluded
consistent with Appellant’s arguments [] there is insufficient
articulated reasoning to support the Examiner’s finding that
Kublickis or Jaschke discloses the argued “media property
entity” claim limitations.
(Decision 8).
Appellant now characterizes this conclusion as “a modest correction
of a single aspect of the Examiner’s claim construction.” Req. Reh’g 5.
Appeal 2020-001216
Application 15/893,354

5
This characterization is contradicted by Appellant’s extensive Appeal Brief
argument (Appeal Br. 6–13) that this correction of an examiner error is
sufficient to reverse all the rejections.3
C.
As to Appellant’s above contention C, the panel has not overlooked
Appellant’s argument as to Jaschke. Rather, we found Appellant’s claim
construction argument determinative as to the rejection. Appeal Br. 4.
Further:
We conclude the Examiner’s analysis fails to meet [the required]
standard because the Examiner’s determination that the two
terms “media property entity” and “media property equipment”
are synonymous with each other is not properly founded.
Decision 7.
As the Examiner’s claim construction lacked a proper foundation, any
analysis of the teachings of the Jaschke reference as applied to that
erroneous claim construction was inherently flawed. Once this improper
foundation is determined to exist, any attempt by the Board to delve into the
Examiner’s findings as to Jaschke and Appellant’s argument directed thereto
is speculative. Although, the Board can provide advisory opinions at its
discretion, there is no requirement that the Board do so.
Contrary to Appellant’s assertion that “it is ripe for the Board to
decide” (Req. Reh’g 4):
We recommend[ed] that the Examiner reevaluate the
appropriateness of a rejection under 35 U.S.C. § 103 based on

3 37 C.F.R. § 37(c)(1)(iv) “The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant.”
Appeal 2020-001216
Application 15/893,354

6
the teachings of the Kublickis, Jaschke, and Horowitz references
in light of the proper claim construction.
Decision 8.
Essentially, we agree with Appellant that the appealed claims were
not examined as properly construed, but are unwilling to conclude that such
an examination is not now required.
D.
As to Appellant’s above contention D, the panel has not overlooked
Appellant’s argument as to combining Jaschke and Kublickis. Rather, as in
the section C analysis directly above, we found Appellant’s claim
construction argument determinative as to the rejection.

DECISION
Based on the record before us, we deny Appellant’s Request for
Rehearing. Appellant has not persuasively identified any points the Board
misapprehended or overlooked.
The Request for Rehearing is denied.
Appeal 2020-001216
Application 15/893,354

7
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
34–37, 39,
41–43, 45,
47–51 53–
56, 58, 60,
61
103 Kublickis, Jaschke 34–37, 39,
41–43, 45,
47–51 53–
56, 58, 60,
61

38, 40, 44,
46, 52, 57,
59
103 Kublickis, Jaschke,
Horowitz
38, 40, 44,
46, 52, 57,
59

Overall
Outcome
34–61

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
34–37, 39,
41–43, 45,
47–51 53–
56, 58, 60,
61
103 Kublickis, Jaschke 34–37, 39,
41–43, 45,
47–51 53–
56, 58, 60,
61
38, 40, 44,
46, 52, 57,
59
103 Kublickis, Jaschke,
Horowitz
38, 40, 44,
46, 52, 57,
59
Overall
Outcome
34–61
Appeal 2020-001216
Application 15/893,354

8
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED