Ex Parte 6757682 et al

Patent Trial and Appeal Board

Apr 24, 2014

95001576 (P.T.A.B. Apr. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,576 03/16/2011 6757682 2230.0002L 1495
27896 7590 04/25/2014
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/25/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC., EBAY, INC., FACEBOOK, INC., NETFLIX, INC., OFFICE
DEPOT, INC., STAPLES, INC., and YAHOO!, INC.
Requesters, Appellants, and Cross-Respondents

v.

INTERVAL LICENSING LLC
Patent Owner, Respondent, and Cross-Appellant
____________

Appeal 2013-005390
Inter partes Reexamination Control 95/001,576
United States Patent 6,757,682 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, KEVIN F. TURNER, STANLEY M.
WEINBERG, and JENNIFER L. McKEOWN, Administrative Patent
Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Requesters appeal under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision declining to reject (1) claims 1-13, 16, 17, and 20-44 under §§ 102
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and 103, and (2) claims 40, 42, and 44 under § 112, first paragraph. TPR
App. Br. 5.1 Patent Owner cross-appeals under 35 U.S.C. §§ 134 and 315
the Examiner’s decision to reject claims 40, 42, and 44 under § 112, second
paragraph. PO App. Br. 10.
We have jurisdiction under 35 U.S.C. §§ 134 and 315, and the appeal
was heard on July 17, 2013.2 We affirm-in-part.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination,
filed on behalf of Requesters on March 16, 2011, of United States Patent
6,757,682 B1 (“the ’682 patent”), issued to Michael Naimark et al. on June
29, 2004.
The ‘682 patent describes alerting users to dynamic content accessible
via a communications or computer network that is of interest at the time of

1 Throughout this opinion, we refer to (1) the Action Closing Prosecution
(“ACP”) mailed November 1, 2011; (2) the Right of Appeal Notice mailed
December 14, 2011 (“RAN”) (incorporating the ACP by reference); (3)
Requesters’ Appeal Brief filed March 13, 2012 (“TPR App. Br.”); (4) Patent
Owner’s Respondent Brief filed April 13, 2012 (“PO Resp. Br.”); (5) the
Examiner’s Answer mailed May 17, 2012 (“Ans.”) (incorporating the RAN
by reference); (6) Requester’s Rebuttal Brief filed June 18, 2012 (“TPR Reb.
Br.”); (7) Patent Owner’s Appeal Brief filed March 13, 2012 (“PO App.
Br.); (8) Requesters’ Respondents’ Brief filed April 13, 2012 (“TPR Resp.
Br.”); and (9) Patent Owner’s Rebuttal Brief filed June 18, 2012 (“PO Reb.
Br.”).
2 The panel that heard the appeal has been expanded to include Judge
Jeffery. Throughout this opinion, we refer to the transcript of this oral
hearing filed August 9, 2013 (“Tr.”).
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the alert. See generally ‘682 patent, col. 1, ll. 24-28. Claim 1 is illustrative
of the invention and is reproduced below:
1. A system for disseminating to a participant an
indication that an item accessible by the participant via a
network is of current interest, comprising:

a computer configured to receive in real time from a
source other than the participant an indication that the
item is of current interest; process the indication; determine an
intensity value to be associated with the indication and an
intensity weight value, and adjusting the intensity value based
on a characteristic for the item provided by the source; and; and
inform the participant that the item is of current interest; and

a database, associated with the computer, configured to
store data relating to the item.

RELATED PROCEEDINGS
This appeal is said to be related to 11 pending judicial proceedings
that have been stayed in view of this reexamination proceeding. See TPR
App. Br. 1; PO Resp. Br. 1.

THE APPEALED REJECTIONS AND PROPOSED REJECTIONS3
Requesters appeal the Examiner’s non-adoption of the following
proposed rejections:
Claims 1-13, 16, 17, and 204-44 under 35 U.S.C. § 102(e) as
anticipated by Bezos (US 7,082,407 B1; issued July 25, 2006; filed Aug. 19,
1999).

3 Patent Owner does not appeal the Examiner’s rejection of claim 30 under
§ 112, fourth paragraph. PO App. Br. 4 n.1.
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Claims 1-13, 16, 17, and 20-44 under 35 U.S.C. § 103(a) as obvious
over Bezos and Spiegel (US 6,466,918; issued Oct. 15, 2002; filed Nov. 18,
1999).
Claims 1-13, 16, 17, and 20-44 under 35 U.S.C. § 103(a) as obvious
over Bezos and Meunier (US 6,681,369 B2; issued Jan. 20, 2004; filed May
5, 1999).
Claims 1-13, 16, 17, and 20-44 under 35 U.S.C. § 102(e) as
anticipated by Spiegel.
Claims 1-13, 16, 17, and 20-44 under 35 U.S.C. § 103(a) as obvious
over Spiegel and Meunier.
Claims 1-13, 16, 17, and 20-44 under 35 U.S.C. § 102(e) as
anticipated by Rucker (US 6,195,657 B1; issued Feb. 27, 2001; filed Sept.
25, 1997).
Claims 1-5, 8-10, 16, 17, and 20-44 under 35 U.S.C. § 102(e) as
anticipated by Sheena (US 6,049,777; issued Apr. 11, 2000; filed Mar. 14,
1997).
Claims 6, 7, and 11-13 under 35 U.S.C. § 103(a) as obvious over
Sheena and Bezos.
Claims 1-5, 8, 17, and 20-44 under 35 U.S.C. § 102(b) as anticipated
by Rose (US 5,724,567; issued Mar. 3, 1998).

4 Although the Examiner omits claim 20 in the statement of the proposed
rejections, the parties nonetheless include this claim. Compare ACP 3 with
TPR App. Br. 5, 8 n.5; PO Resp. Br. 3. Accordingly, we deem the
Examiner’s omission a harmless typographical error and include claim 20
here.
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Claims 6, 7, 9-13, and 16 under 35 U.S.C. § 103(a) as obvious over
Rose and Bezos.
Claims 9, 10, and 16 under 35 U.S.C. § 103(a) as obvious over Rose
and Sheena.
Claims 40, 42, and 44 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
Patent Owner cross-appeals the Examiner’s rejection of claims 40, 42,
and 44 under 35 U.S.C. § 112, second paragraph as indefinite.

THE PROPOSED REJECTIONS OVER BEZOS
The Examiner finds that Bezos does not disclose “a computer
configured to receive in real time from a source other than the participant an
indication that the item is of current interest” (“the ‘real time’ limitation”) in
combination with the other limitations recited in independent claim 1.
Based on this deficiency, the Examiner declines to adopt the proposed
anticipation rejection over Bezos, nor does the Examiner find that the
Spiegel and Meunier references cited in combination with Bezos in the
associated obviousness rejections cure that deficiency. ACP 10-14.5
Requesters argue that the Examiner’s sole basis for not adopting the
proposed rejections based on Bezos’ perceived failure to disclose the “real
time” limitation is flawed because Bezos’ Internet-based web server
computer receives indications that an item is of current interest in real time
from a source other than the participant, namely by receiving “purchase

5 Because the Examiner’s RAN incorporates the ACP by reference (RAN 2),
we refer to the ACP throughout this opinion.
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events” when a user rates, reviews, or accesses a particular product or item
via a website. TPR App. Br. 11-20; TPR Reb. Br. 2-7. These purchase-
events, which can include click-through events and adding items to a
shopping cart (TPR App. Br. 11), are said to be “indications” received in
real time, namely “immediately or almost immediately” after they are
provided to the web server due to the inherent one-way web data
transmission times of less than a quarter of a second as evidenced by Dr.
Schaefer’s declaration and the supporting documentation. TPR App. Br. 14-
18.
Patent Owner argues that Requesters’ mapping of Bezos’ “Hotseller
Notification” emails and purchasing user actions to the recited indication
fails because not only are these emails not received from a source other than
a participant (the purchasing users), but Bezos does not determine and adjust
an “intensity value” representing the intensity of the received indication. PO
Resp. Br. 6-8.

ISSUE
Has the Examiner erred in declining to reject claims 1-13, 16, 17, and
20-44 under §§ 102 or 103? This issue turns on whether (1) the Examiner
erred by finding that Bezos does not disclose a computer configured to
receive in real time from a source other than the participant an indication
that an item is of current interest in combination with the other recited
limitations of independent claim 1, and (2) Bezos discloses the limitations of
dependent claims 20-26 and 39-44?

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ANALYSIS
We begin by noting that the Examiner’s sole basis for not adopting the
proposed rejections based on Bezos is that reference’s perceived failure to
disclose the “real time” limitation noted above. See ACP 10-14. In reaching
this conclusion, the Examiner finds that Bezos’ (1) updating tables; (2)
generating lists of popular items; and (3) notifying hot-selling items is not
“receiving,” nor does the fact that this list generation and notification is
automatic mean that these functions are performed in real time. ACP 10-13.
Patent Owner, however, does not squarely address the Examiner’s
rationale based solely on the perceived deficiency regarding the “real time”
limitation, but rather argues that Bezos’ failure to disclose other limitations
of claim 1 combined with the “real time” limitation is why the Examiner
correctly did not adopt the proposed rejections. PO Resp. Br. 6-8. Notably,
Patent Owner’s representative admitted in the oral hearing that the “real
time” limitation was not an “important distinction,” but rather other
distinctions were said to be “much more critical in the claims” that
distinguish the claims over the cited prior art. Tr. 12:23–13:2.
Although these particular arguments are beyond the scope of the
specific issues raised in Requesters’ opening brief contesting the Examiner’s
above-noted basis for not rejecting the claims as Requesters indicate (TPR
Reb. Br. 3-4; Tr. 3:25–4:8, 25:11–26:23), they are nonetheless germane to
the general issue of whether Bezos anticipates the claims as Patent Owner’s
representative noted at the oral hearing. Tr. 14:6. Therefore, despite
Requesters’ contentions to the contrary (TPR Reb. Br. 3-4), Patent Owner’s
arguments in the Respondent Brief technically comport with 37 C.F.R.
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§ 41.68(a)(3) at least to the extent that they are limited to the general
anticipation issue raised in Requesters’ opening brief. See 37 C.F.R. §
41.68(a)(3) (“The respondent brief shall be limited to issues raised in the
appellant brief to which the respondent’s brief is directed.”).
To be sure, Patent Owner chose to remain silent after the Examiner
articulated a basis for not adopting the proposed rejection in the ACP that
differs from that emphasized in Patent Owner’s Respondent Brief as
Requesters indicate. TPR Reb. Br. 4 (“The Patent Owner had the
opportunity to present written comments following the ACP in which it
could have urged the Examiner to confirm the claims based on grounds
different from those articulated in the ACP. See 37 C.F.R. § 1.951(a).”).6
Although Patent Owner’s silence in such situations may be “standard
procedure” (Tr. 18:18-20), providing clarifying comments after the
Examiner’s ACP would have nonetheless assisted significantly in
identifying and clarifying the particular reasons why Patent Owner believed
the Examiner’s final non-adoption decision was correct before appeal. This
would be particularly helpful where, as here, the Examiner articulates a
patentability rationale that differs from that articulated by Patent Owner.7

6 Accord Tr. 18:18-19 (“[T]ypically when a ground of rejection is not
adopted[,] a patent owner does not respond. I mean, that’s the standard
procedure.”).
7 Accord Tr. 18:9-17 (“JUDGE TURNER: But don’t you think that
clarifying [the non-adopted grounds of rejection in response to the ACP]
might have been helpful? . . . If [the Examiner’s basis for non-adoption] was
bad, it seems like that would be the time the patent owner can come back
and say well, the Examiner is right.”).
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Despite this disparity, precedent nonetheless demands that we
consider Patent Owner’s additional patentability rationale at least to the
extent that it is supported by the record. See Rexnord Industries, LLC v.
Kappos, 705 F.3d 1347, 1356 (Fed. Cir. 2013) (“On judicial review, the
correctness of the decision appealed from can be defended by the appellee
on any ground that is supported by the record, whether or not the appellant
raised the argument.”).
Turning to the Examiner’s decision, we agree with Requesters that the
Examiner’s sole basis for not adopting the proposed rejections due to Bezos’
perceived failure to disclose the “real time” limitation is problematic. First,
it is undisputed that the term “receive in real time” means to “receive
immediately or almost immediately after the indication.” See TPR App. Br.
10 (citing Exh. 16, Parties’ Joint Claim Chart, Pt. 1; Schaefer Decl. ¶ 18).
Second, Dr. Schaefer declares that the ability to receive an indication “in
real time” is an inherent characteristic of a World Wide Web connection
whose transmission times in the late 1990s were “typically well under one
second (and in many cases much less).” Schaefer Decl. ¶ 19. Dr. Schaefer
further notes that round-trip ping times averaged less than half a second by
June 1997, and that one-way transmission times from a web browser to a
server could be less than half of that time. Id. ¶¶ 20-22 (citing multi-year
Internet performance study in Exh. B). According to Dr. Schaefer, this
performance satisfies the “real time” receipt requirement “because the
indication would be received by the server immediately or almost
immediately after it was provided by the web browser.” Id. ¶ 23.
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Based on this evidence, we find persuasive Requesters’ position that
Bezos’ purchase-event-based “indications” are received in real time, namely
“immediately or almost immediately” after they are provided to the web
server due to the inherent one-way web data transmission times of less than
a quarter of a second as evidenced by Dr. Schaefer’s declaration and the
supporting documentation. TPR App. Br. 14-18.
Neither the Examiner nor Patent Owner persuasively rebut
Requesters’ position in this regard. Apart from noting Bezos’ (1) updating
tables; (2) generating lists of popular items; and (3) notifying hot-selling
items is not “receiving” (ACP 10-13), the Examiner fails to address—let
alone persuasively rebut—Requesters’ position that “purchase events” (i.e.,
events that occur when a user purchases, rates, reviews, or accesses a
particular product or item which can include “click through events” or
adding items to a shopping cart) would be received in real time by Bezos’
web server, namely in less than a quarter of a second. TPR App. Br. 11-17.
The Examiner’s position that Bezos’ updating tables in real time does
not disclose the recited reception (ACP 11) is also unavailing, for it does not
squarely address—let alone persuasively rebut—Requesters’ position noted
above, but also fails to acknowledge that Bezos would be unable to update
its tracking tables in real time responsive to purchase events if it did not
receive the relevant indications of these events in real time. TPR App. Br.
19. This functionality only further bolsters Requesters’ position that Bezos’
indications would be received in real time to perform this real-time update.
We also agree with Requesters that Bezos receives an indication from
a source other than the participant as claimed. Nothing in claim 1 precludes
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Bezos’ purchase-event-based “indications” that are provided by users other
than the participant as Requesters indicate. TPR Reb. Br. 4-5 (citing Bezos,
col. 1, ll. 47-51; col. 13, ll. 46-51). Patent Owner’s contentions that (1)
Bezos’ notification system is not a user-based “source other than the
participant” recited in claims 21-26, and (2) Bezos does not receive
indications from plural such sources in claims 40, 42, and 44 (PO Resp. Br.
7) are unavailing, for these arguments are not germane to Bezos’ users that
Requesters map to the recited “source.” TPR Reb. Br. 4-5.
We also agree with Requesters that Bezos determines an “intensity
value” to be associated with the indication,8 and adjusts this value based on a
characteristic for the item provided by the source as recited in claim 1. The
term “intensity” in the ’682 patent “refers to the weight or value to be
assigned to a particular alert regarding an item.” ’682 patent, col. 6, ll. 54-
56. Based on this definition, we see nothing in claim 1 precludes Bezos’
determining a purchase count (“intensity value”) that is at least associated
with a received “indication,” namely a purchase event. See TPR Reb. Br. 5-
6 (citing Bezos, col. 12, ll. 24-25; col. 10, ll. 53-56; col. 11, ll. 1-5); Tr.
28:24-25 (“The purchase count is the intensity value.”).

8 Although the claim recites that the intensity value is also to be associated
with an “intensity weight value,” there is no clear dispute regarding this
particular term in connection with the proposed anticipation rejection over
Bezos. See PO Resp. Br. 6-8. In any event, to the extent that Patent
Owner’s arguments apply to this term, we agree with Requesters that
Bezos’s product “acceleration” and “velocity” fully meet an “intensity
weight value” as noted in the oral hearing. Tr. 30:15-18. See Bezos, col. 5,
ll. 45-50.
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Nor does the claim preclude Bezos’ adjusting this “intensity value” by
incrementing the purchase count via the calculation in Table 1. As
Requesters indicate, this incremental adjustment is based at least partly on a
“characteristic for the item provided by the source,” namely the user’s
adding the item (book) to a shopping cart or submitting a product rating or
review. TPR Reb. Br. 6 (citing Bezos, col. 12, ll. 31-33, 46-51, 61-66 (Table
1).9 Patent Owner’s contention that Bezos does not adjust the purchase
count based on any “characteristic for the item provided by the source” (PO
Resp. Br. 7) is unavailing and not commensurate with the scope of the claim
that does not preclude Requesters’ interpretation. We are likewise
unpersuaded by Patent Owner’s arguments that Bezos does not (1) assign the
intensity value to the indication as recited in claims 39, 41, and 43, and (2)
adjust the intensity value for the particular indication as recited in claims 40,
42, and 44. PO Resp. Br. 7-8. As Requesters indicate, Bezos’ purchase
count calculation can occur responsive to a purchase event (“indication”).
TPR Reb. Br. 7. As such, there would be some sort of assignment of this
count-based intensity value to the associated purchase-event-based
“indication” due to this correspondence. Furthermore, because Bezos
determines intensity values (“purchase counts”) by considering different
indications of user interest, the intensity value would be adjusted for these
particular indications as Requesters indicate. TPR Reb. Br. 7-8). Patent

9 Accord Tr. 29:9-10 (“[T]he fact that a purchase click had been made is the
characterization of the item. This book was purchased.”); Tr. 31:11-14
(“[T]he characteristic for the item is that it has been purchased or it hasn’t.
It’s popular or it’s not. And we’re not limited to purchases. We can also do
product reviews or product ratings, and all of those are definitely
characteristics for the item.”).
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Owner’s arguments (PO Resp. Br. 7-8) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are persuaded that the Examiner erred by not rejecting
1-13, 16, 17, and 20-44 as anticipated by Bezos. We reach a similar
conclusion regarding the Examiner’s obviousness rejections of those claims
over (1) Bezos and Spiegel and (2) Bezos and Meurnier, for the Examiner’s
error noted above also applies to these rejections that were likewise not
adopted based solely on a similar perceived deficiency of Bezos regarding
the “real time” limitation. See ACP 13-14.
Because our decision is dispositive regarding patentability of these
claims based on these references, we need not reach the merits of the
Examiner’s decision to not adopt the other prior art rejections based on
Spiegel, Rucker, Sheena, Rose, and other references. ACP 15-26. See In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

THE INDEFINITENESS REJECTION
The Examiner finds that because the independent claims recite
disseminating to a participant an indication, but dependent claims 40, 42,
and 44 recite plural indications, the scope of the dependent claims is
indefinite. ACP 31.
Patent Owner argues that these dependent claims are definite because
the independent claims recite two different indications: one that is
disseminated to a participant in the preamble and the other that is received
from a source other than the participant in the body. PO App. Br. 10-20; PO
Reb. Br. 1-3. Patent Owner adds that dependent claims 40, 42, and 44 are
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clear in that they further limit the scope of “an indication” received from a
source in the independent claims which covers one or more indications to
more than one indication from plural sources in the dependent claims. Id.
Requester argues that not only is it unclear which of the plural
indications is the subject of the independent claims’ processing and
determining steps, it is allegedly impossible to ascertain which item is
referenced in the final informing step in light of the dependent claims. TPR
Resp. Br. 2-4.

ISSUE
Has the Examiner erred in rejecting claims 40, 42, and 44 under
§ 112, second paragraph by finding that the recited plural indications renders
those claims indefinite in view of the recited indication in the independent
claims?

ANALYSIS
We will not sustain the Examiner’s indefiniteness rejection for the
reasons indicated by Patent Owner. PO App. Br. 10-20; PO Reb. Br. 1-3.
First, although the same term “indication” is used in the preamble and body
of the independent claims, they nonetheless refer to different indications by
the language of the claims themselves. That is, the preambular “indication”
is that indication that is disseminated to a participant, but the “indication” in
the body of the claim is that which is received in real time from a source
other than the participant and processed. This distinction reasonably
comports with the ‘682 patent’s different indications in connection with
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received and disseminated alerts as Patent Owner indicates. PO App. Br.
14-16.
Second, we agree with Patent Owner that the plural indications recited
in dependent claims 40, 42, and 44 merely further narrow “an indication”
that is received in the independent claims. It is well settled that the
indefinite article “a” or “an” means “one or more” in open-ended claims
containing the transitional phrase, “comprising.” KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Because “an
indication” received from a source in the independent claims covers one or
more indications, limiting this recitation to more than one indication from
plural sources in the dependent claims does not render the claims indefinite.
To be sure, “[w]hen the claim language and specification indicate that
‘a’ means one and only one, it is appropriate to construe it as such even in
the context of an open-ended ‘comprising’ claim.” Harari v. Lee, 656 F.3d
1331, 1341 (Fed. Cir. 2011). But that is not the case here, nor have the
Examiner or Requesters shown that such an exception applies.
Therefore, we are persuaded that the Examiner’s indefiniteness
rejection of claims 40, 42, and 44 is erroneous.

THE WRITTEN DESCRIPTION REJECTION
Because the Examiner did not adopt the proposed rejection of claims
40, 42, and 44 under § 112, first paragraph based solely on the erroneous
finding that the claims are indefinite (ACP 31-32), we likewise do not
sustain the Examiner’s decision to not adopt the § 112, first paragraph
rejection. We emphasize, however, that our decision is based solely on the
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Examiner’s error regarding the indefiniteness rejection whose erroneous
basis formed the only rationale to not adopt the written description rejection.
Id. We express no opinion on the merits of the proposed written description
rejection, but rather leave that question to the Examiner to determine in the
first instance should prosecution reopen after our decision. What we can
say, however, is that the Examiner’s articulated basis for not adopting the
proposed written description rejection is untenable on this record.

THE § 112 REJECTION OF CLAIM 30
Because Patent Owner does not contest the Examiner’s rejection of
claim 30 under § 112, fourth paragraph (PO App. Br. 4 n.1), we summarily
sustain this rejection. See MPEP § 1205.02 (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).

CONCLUSION
Under § 102, the Examiner erred in declining to reject claims 1-13,
16, 17, and 20-44 as anticipated by Bezos. Accordingly, we reverse that
decision.
Under § 103, the Examiner erred in declining to reject claims 1-13,
16, 17, and 20-44 as obvious over (1) Bezos and Spiegel and (2) Bezos and
Meunier. Accordingly, we reverse that decision.
The Examiner erred in rejecting claims 40, 42, and 44 as indefinite
under § 112, second paragraph. Accordingly, we reverse that decision.
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The Examiner erred in declining to reject claims 40, 42, and 44 as
failing to comply with the written description requirement. Accordingly, we
reverse that decision.
We summarily affirm the decision of the Examiner to reject claim 30
under § 112, fourth paragraph.
We do not reach the merits of the Examiner’s decision declining to
adopt the other prior art rejections based on Spiegel, Rucker, Sheena, Rose,
and other references.

DECISION
The Examiner’s decision regarding claims 1-13, 16, 17, and 20-44 is
affirmed-in-part.
Under 37 C.F.R. § 41.77(a), the above-noted reversal constitutes a
new ground of rejection. Section 41.77(b) provides that “a new ground of
rejection . . . shall not be considered final for judicial review.” That section
also provides that Patent Owner, WITHIN ONE MONTH FROM THE
DATE OF THE DECISION, must exercise one of the following two options
with respect to the new grounds of rejection to avoid termination of the
appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
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ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the time periods for requesting rehearing under
paragraph (a) of this section, for requesting further rehearing under
paragraph (c) of this section, and for submitting comments under paragraph
(b) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-44 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Appeal 2013-005390
Reexamination Control 95/001,576
Patent US 6,757,682 B1

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