Ex Parte 7,139,761 B2 et al

Patent Trial and Appeal Board

Oct 17, 2012

95001261 (P.T.A.B. Oct. 17, 2012)

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.
95/001,261 11/13/2009 7,139,761 B2 LTI0002-RXM 5286
31013 7590 12/23/2013
KRAMER LEVIN NAFTALIS & FRANKEL LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/23/2013 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
____________

FACEBOOK, INC.
Requester

v.

LEADER TECHNOLOGIES, INC.
Patent Owner
____________

Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION
Examiner’s Determination under 37 C.F.R. § 41.77(d)
37 C.F.R. § 41.77(f)

Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2

2
In an earlier Decision, 2012-009270, mailed October 17, 2012
(“Decision”), the Board reversed the Examiner’s decision favorable to the
patentability of claims 2-3, 5-6, 8, 10, 12-15, 24, 26, 29, 33, and 34 of US
Patent No. 7,139,761 B2 (the “’761 patent”). Decision 12. In particular, we
reversed the Examiner’s decision not to reject claims 2-3, 5-6, 8, 10, 12-15,
24, 26, 29, 33, and 34 over prior art. Our reversal of the Examiner’s
decision in connection with the prior art rejections of claims 2-3, 5-6, 8, 10,
12-15, 24, 26, 29, 33, and 34 was designated new grounds of rejection
pursuant to 37 C.F.R. § 41.77(b).
Patent Owner, Leader Technologies, Inc., elected to reopen
prosecution and submitted amendments affecting claims 2-3, 5-6, 8, 10, 12-
15, 24, 26, 29, 33, and 34.
1
Patent Owner argued that the newly presented
amendments pursuant to 37 C.F.R. § 41.77(b) distinguished claims 2-3, 5-6,
8, 10, 12-15, 24, 26, 29, 33, and 34 over the rejections that were applied to
those claims (see, e.g., PO Request 15-21). Requester, Facebook, Inc., filed
comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s
request to reopen prosecution.
2
In Requester’s comments (“3PR Resp.”),
Requester proposed new rejections in response to Patent Owner’s claim
amendments. Specifically, Requester proposed the following rejections:

1
See Patent Owner’s “Request to Reopen Prosecution Under 35 C.F.R.
41.77(b)(1)” filed November 16, 2012 (“PO Request to Reopen Prosecution”
or “PO Request”).

2
See Requester’s “Third Party Requester’s Comments on the Patent
Owner’s Amendment and Request to Reopen Prosecution in Inter Partes
Reexamination” filed December 17, 2012 (“3PR Resp.”).
Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2

3
Claims 2-3, 8, 10, 12, 24, 33, and 34 under 35 U.S.C.
§ 314(a) as impermissibly broadening the scope of the claims;
Claims 2-3, 5-6, 8, 10, 12-15, 24, 26, 29, 33 and 34 under
35 U.S.C. § 112, 1
st
paragraph for failing to satisfy the written
description requirement;
Claim 2 as anticipated by Hess;
Claims 2-3, 5-6, 8, 10, 12-15, 26, 29, and 33 as obvious
over Hess and Dourish;
Claims 24 and 34 as obvious over Hess, Dourish, and
Hill;
Claims 2-3, 5-6, 8, 10, 12-14, 26, 29, and 33 as
anticipated by Swartz;
Claims 3, 24, and 34 as obvious over Swartz and Hill;
and
Claim 15 as obvious over Swarz and Fox.

3PR First Resp. 6-48.
In accordance with 37 C.F.R. § 41.77(d), the Examiner adopts each of
Requester’s proposed rejections.
3

Pursuant to 37 C.F.R. § 41.77(e), both Patent Owner and Requester
submitted responses to the Examiner’s Determination.
4
Patent Owner also
submitted new claim amendments affecting claims 2-3, 5-6, 8, 10, 12-15, 24,
26, 29, 33, and 34.

3
See “Determination under 37 CFR § 41.77(d)” mailed April 29, 2013
(“Examiner’s Determination” or “Ex’r Determ.”).

4
“Patent Owner’s Response to Examiner’s Determination,” filed
May 29, 2013 (“PO Resp. to Exr’s Determination”) and “Third Party
Requester’s Comments on the Patent Owner’s Response to the Examiner’s
Determination in Inter Partes Reexamination,” filed June 28, 2013 (“3PR
Comments on PO’s response” or “3PR Comments”).
Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2

4
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
In response to Examiner’s determination of unpatentability of each of
claims 2-3, 5-6, 8, 10, 12-15, 24, 26, 29, 33, and 34 (Examiner’s
Determination), Patent Owner does not argue patentability of claims 2-3, 5-
6, 8, 10, 12-15, 24, 26, 29, 33, or 34 as amended pursuant to 37 C.F.R.
§ 41.77(b) and presented in the “PO Request to Reopen Prosecution” dated
November 16, 2012. In other words, Patent Owner does not demonstrate
persuasively that the Examiner erred in adopting the rejections (noted above)
of claims 2-3, 5-6, 8, 10, 12-15, 24, 26, 29, 33, or 34, as amended in Patent
Owner’s request to reopen prosecution pursuant to 37 C.F.R. § 41.77(b).
Patent Owner proposes new amendments to each of claims 2- 3, 5- 6,
8, 10, 12-15, 24, 26, 29, 33, and 34 (PO Resp. to Exr’s Determination, pp. 2-
9) under 37 C.F.R. § 41.77(e) and argues that the claim amendments
presented should be entered pursuant to 37 C.F.R. § 1.116(b)(3) (PO
Response to Examiner’s Determination, pp. 10-11). 37 C.F.R. § 1.116(b)(3)
states that “[a]fter a final rejection . . . in an inter partes reexamination . . .
but before or on the same date of filing an appeal . . . [a]n amendment
touching the merits of the . . . patent under reexamination may be admitted
. . . ” Notably, 37 C.F.R. § 1.116(b)(3) permits entry of new claim
amendments in an inter partes reexamination “before or on the same date of
filing an appeal.” In the present case, Patent Owner presents new claim
amendments after the date of filing the appeal. Therefore, we disagree with
Patent Owner that 37 C.F.R. § 1.116(b)(3) applies to the present case.
Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2

5
Also, 37 C.F.R. § 41.77(e) states that in response to the Examiner’s
determination pursuant to 37 C.F.R. § 41.77(d), Patent Owner may “submit
comments in response to the examiner’s determination” but does not appear
to permit Patent Owner to also submit new claim amendments in response to
the Examiner’s determination. Nor does Patent Owner provide an adequate
showing that 37 C.F.R. § 41.77(e) permits the entry of new claim
amendments after the Examiner’s determination pursuant to 37 C.F.R.
§ 41.77(d). Therefore, Patent Owner’s proposed claim amendments
submitted with Patent Owner’s response to the Examiner’s Determination
(i.e., pursuant to 37 C.F.R. § 41.77(e)) are not entered.
In reviewing the Examiner’s Determination, we do not discern any
cause to conclude that the determinations conveyed therein, and as
summarized above, are incorrect. Accordingly, after due consideration of
the record before us, we are not persuaded of error in the Examiner’s
determinations.

CONCLUSION
The Examiner’s determination that each of Requester’s proposed
rejections of claims 2-3, 5-6, 8, 10, 12-15, 24, 26, 29, 33, and 34 should be
adopted is affirmed.

AFFIRMED

ak

Appeal 2014-000788
Reexamination Control 95/001,261
Patent 7,139,761 B2

6
Kramer Levin Naftalis & Frankel, LLP
Intellectual Property Department
1177 Avenue of the Americas
New York, NY 10036

Third Party Requester:

Cooley Godward Kronish, LLP
777 6
th
Street, NW
Suite 1100
Washington, DC 20001