Ex Parte 7149625 et al

Patent Trial and Appeal Board

Apr 18, 2013

95001349 (P.T.A.B. Apr. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TELENAV, INC.,
Third Party Requester and Appellant
v.
WRE-HOL LLC,
Patent Owner and Respondent
____________________

Appeal 2013-003192
Reexamination Control No. 95/001,349
Patent 7,149,625 B2
Technology Center 3900
___________

Before JEFFREY B. ROBERTSON, Administrative Patent Judge

ORDER
BOARD RULE 41.77(f)

This proceeding has been referred to the Board for a finalization of the
Board's Decision mailed April 19, 2013 (hereinafter "Decision"). In that Decision,
the Board affirmed the Examiner's rejections of claims 1, 2, 8-14, 19, 23, 30-34,
36, 42-46, 48, and 51-84, and the Board reversed the Examiner's refusal to adopt
the Requester's proposed rejections of claims 15-17, 20-22, and 40.
Appeal 2013-003192
Reexamination Control No. 95/001,349
Patent 7,149,625 B2

2
The Board entered new grounds of rejection as to claims 15-17, 20-22, and 40
pursuant to 37 C.F.R. § 41.77(b) in the Decision.1 Patent Owner had canceled
claims 3-7, 18, 24-29, 35, 37-39, 41, 47, 49, and 50.2
In response to the new grounds of rejection, the Patent Owner has not filed
either a request for reopening of prosecution pursuant to 37 C.F.R. § 41.77(b)(1)
nor a request for a rehearing based upon the same record pursuant to 37 C.F.R.
§ 41.77(b)(2). As a consequence, the appeal proceeding as to claims 15-17, 20-22,
and 40 was terminated. See 37 C.F.R. § 41.77(b). The Board's Decision is now
final and appealable to the United States Court of Appeals for the Federal Circuit,
as the parties' rights to request rehearing are exhausted. See 37 C.F.R. § 41.81,
which refers to 37 C.F.R. § 1.983.

ORDER
The decision affirming Examiner's decision to reject claims 1, 2, 8-14, 19, 23,
30-34, 36, 42-46, 48, and 51-84 is final and appealable.
Appeal proceedings as to claims 15-17, 20-22, and 40 are terminated.
This paper serves as the new decision under 37 C.F.R. § 41.77(f), to the extent
the rule calls for a decision. Any requirement beyond that of the rule is hereby
waived.

peb

1 See Decision 2, 43.
2 See Decision 3, Footnote 5.
Appeal 2013-003192
Reexamination Control No. 95/001,349
Patent 7,149,625 B2

3

Counsel for Patent Owner:
Lowe, Graham, Jones, PLLC
701 Fifth Avenue
Suite 4800
Seattle, WA 98104

Counsel for Third Party Requester:
Sterne, Kessler, Goldstein & Fox, PLLC
1100 New York Avenue, N.W.
Washington, D.C. 20005