Ex Parte 5913180 et al

Board of Patent Appeals and Interferences

Jun 17, 2010

90007920 (B.P.A.I. Jun. 17, 2010)

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.
90/007,920 02/08/2006 5913180 7026320/25500 5033
26386 7590 09/01/2010
DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C.
THE DAVIS BROWN TOWER
215 10TH STREET SUITE 1300
DES MOINES, IA 50309
EXAMINER
LEWIS, AARON J
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/01/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL C. RYAN,
Appellant
____________

Appeal 2010-006577
Reexamination Control 90/007,920
Patent 5,913,180
Technology Center 3900
____________

Before RICHARD TORCZON, ROMULO H. DELMENDO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL
DATE” shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-006577
Reexamination Control 90/007,920
Patent 5,913,180

2
Appellant requests rehearing of our June 17, 2010 Decision
(hereinafter “original Decision”), in which we affirmed the Examiner’s final
rejection under 35 U.S.C. § 102(b) of claims 1-3, 7, 18, 21, and 22 as
anticipated by United States Patent 5,184,309 to Simpson (Request for
Rehearing filed August 13, 2010, hereinafter “Req. Reh’g”).2
We DENY Appellant’s request to modify our original Decision.
Appellant contends that “had the Board not misapprehended and/or
overlooked [certain] points, the Board would not have affirmed the
Examiner’s rejection of claim 22” (Req. Reh’g at 1). While not disputing
our finding that Appellant had argued claims 1-3, 7, 18, 21, and 22 together,
Appellant now contends that “the explanatory logic of the Board’s Decision
is inherently inconsistent and flawed as it rejects claim 22 for lacking a
limitation which claim 22 clearly contains” (Req. Reh’g at 3; original
Decision at 4). Specifically, Appellant states that “claim 1 was rejected
because it failed to bring itself outside Simpson by limiting the receipt of
information to the receipt of information from a remote location” but that
“claim 22 contains this limitation and therefore does not fall within the
Board’s asserted explanation for affirming the Examiner’s rejection” (Req.
Reh’g at 3). Appellant then asserts that we invoked 37 C.F.R. § 41.50(c)
and therefore the amendment attached to the Request should be entered
(Req. Reh’g at 4-6).

2 We also reversed a final rejection under 35 U.S.C. § 103(a) of claims 4, 5,
8, 10, 19, 20, 23, and 25-27 as unpatentable over Simpson in view of United
States Patent 4,263,945 to Van Ness. Appellant does not contest that part of
our decision.
Appeal 2010-006577
Reexamination Control 90/007,920
Patent 5,913,180

3
37 C.F.R. § 41.37(c)(1)(vii) states in relevant part (emphasis added):
[T]he failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any
grouped claim separately. Any claim argued separately should
be placed under a subheading identifying the claim by number.

In this case, it is undisputed that Appellant argued claims 1-3, 7, 18,
21, and 22 together as a single group and that the Appeal Brief did not
include a separate subheading, let alone separate arguments, focusing on
claim 22 (App. Br. 8; Reply Br. at 4). Under these circumstances, it was
appropriate to confine our discussion to claim 1, which we selected as
representative, and to address Appellant’s arguments as they relate to
selected claim 1. As our discussion of the anticipation rejection was limited
to claim 1, we did not misapprehend or overlook any fact. Appellant’s
belated attempt to argue claim 22 separately is not well taken.
Even if Appellant had argued claim 22 separately, Appellant failed to
address our findings in the paragraph bridging pages 13-14 of our original
Decision, where we discussed the remote aspect of transactions involving
credit card information disclosed by Simpson. Accordingly, Appellant’s
belated attempt would have been futile in any event.
Finally, Appellant’s proposed amendment pursuant to 37 C.F.R.
§ 41.50(c) is also inappropriate because our original Decision did not invoke
the rule or “include an explicit statement of how a claim on appeal may be
amended to overcome a specific rejection,” as provided by the rule. Indeed,
such an explicit statement would have been inconsistent with our analysis in
the paragraph bridging pages 13-14 of our original Decision.
Appeal 2010-006577
Reexamination Control 90/007,920
Patent 5,913,180

4

DECISION
While we have reconsidered certain aspects of our original Decision
in light of Appellant’s arguments, we decline to modify our original
Decision in any respect.
DENIED

saw

FOR PATENT OWNER:
DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C.
THE DAVIS BROWN TOWER
215 10TH STREET, SUITE 1300
DES MOINES, IA 50309