95000663 (P.T.A.B. Nov. 18, 2015)

Ex Parte 7,191,273 et al

Patent Trial and Appeal BoardNov 18, 2015

95000663 (P.T.A.B. Nov. 18, 2015)

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. 95/000,663 04/13/2012 7,191,273 ART-12-5014REX 4765 25226 7590 11/19/2015 MORRISON & FOERSTER LLP 755 PAGE MILL RD PALO ALTO, CA 94304-1018 EXAMINER KE, PENG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/19/2015 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 ____________ ARTERIS, INC., Requester, v. SONICS, INC., Patent Owner. ____________ Appeal 2014-009395 Reexamination Control 95/000,663 Patent 7,191,273 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and IRVIN E. BRANCH, Administrative Patent Judges. SIU, Administrative Patent Judge. Appeal 2014-009395 Reexamination Control 95/000,663 Patent 7,191,273 B2 2 DECISION ON REQUEST FOR REHEARING Patent Owner submits a Request for Rehearing (Req. Reh’g.) under 37 C.F.R. § 41.79(b) from the Opinion of the Patent Trial and Appeal Board, dated May 19, 2015 (“Decision”). In the Decision, we affirmed the Examiner’s rejection of claims 2–17 and 20–31 as anticipated by Fong.1 Decision 12. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Patent Owner argues that “Fong consistently describes jobs and job classes as being separate and distinct concepts.” Req. Reh’g 4. Thus, Patent Owner argues that Fong fails to disclose jobs and job classes are the same thing. We note that claim 2, for example, does not recite “job” or “job classes” or that a “job” must be the same thing as a “job class.” We disagree with Patent Owner that we misconstrued or overlooked points regarding this issue. Patent Owner argues that Fong fails to disclose “‘demoting a priority level of the first channel’” because, according to Patent Owner, “nothing in Fong suggests that job classes are migrated as opposed to individual jobs.” Req. Reh’g. 5. We disagree with Patent Owner for at least the previously stated reasons and reasons set forth by Requester. Decision 6–9, Requestor Comments on Request for Rehearing, dated July 17, 2015, 2–3. Patent Owner argues that “the Decision constitutes a new ground of rejection.” Req. Reh’g. 6. In particular, Patent Owner argues that “the 1 US Patent No. 6,263,359 B1 (“Fong”). Appeal 2014-009395 Reexamination Control 95/000,663 Patent 7,191,273 B2 3 Decision relies upon” a different portion of the Fong reference than that cited by the Examiner with respect to discussions regarding “priority levels of job classes.” Req. Reh’g. 6. We note that “the ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had a fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). Hence, a rejection may be deemed a “new ground” if the “thrust of the rejection” is changed and not merely based on the citation of a different line number within a previously cited reference. We disagree with Patent Owner for at least the reasons set forth by Requester. Requestor Comments on Request for Rehearing, dated July 17, 2015, 4–5. For example, in the present case with respect to the issue of “priority levels,” the Examiner stated that “Fong teaches demoting the priority level of job class” because “the job class that has priority can loses [sic] it when the time-function determines the job class has exceeded its threshold.” RAN 10. Similarly, we agreed with the Examiner and reiterated that Patent Owner does not point out sufficient differences between Fong’s disclosure of each job class being associated with a “level” in a hierarchy and one job class dropped to a lower class (which is associated with another (lower) “level” in the hierarchy), and the “level” as recited in claim 2, for example. Decision 7. The basic thrust of the rejection discussed in the Decision being the same as that of the Examiner, and in the absence of a sufficient showing by Patent Owner of a specific difference in the thrust of the rejection in the Decision as compared to that of the Examiner, we are not persuaded by Appeal 2014-009395 Reexamination Control 95/000,663 Patent 7,191,273 B2 4 Patent Owner that designation of the same thrust of the rejection as a new ground is warranted. We have considered Patent Owner’s arguments but find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is DENIED. DENIED cdc THIRD PARTY REQUESTER: PATENT GROUP C/O DLA PIPER US LLP 203 N. LaSalle Street Suite 1900 Chicago, IL 60601 PATENT OWNER: MORRISON & FOERSTER LLP 755 Page Mill Road Palo Alto, CA 94304-1018