95001411 (P.T.A.B. Dec. 26, 2013)

Ex Parte 7,644,122 et al

Patent Trial and Appeal BoardDec 26, 2013

95001411 (P.T.A.B. Dec. 26, 2013)

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. 95/001,411 08/25/2010 7,644,122 FABO-005/00US 5232 66385 7590 12/27/2013 TECHCOASTLAW 2032 Whitley Ave HOLLYWOOD, CA 90058 EXAMINER TON, MY TRANG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/27/2013 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. FRANK M. WEYER and TROY K. JAVAHER Patent Owners Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 Technology Center 3900 ____________ Before BIBHU R. MOHANTY, KEVIN F. TURNER, and JOSIAH C. COCKS, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 2 I. INTRODUCTION The owners of U.S. Patent 7,644,122, Frank M. Weyer and Troy K. Javaher (collectively the “Patent Owner”), request rehearing under 37 C.F.R. § 41.79 of the Board’s Decision mailed June 5, 2013 (“Decision”).1 Third- Party Requester, Facebook, Inc. (“Requester”), contends that the Patent Owner’s rehearing request should be denied.2 For the following reasons, the Patent Owner’s request for rehearing is denied. II. DISCUSSION A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked” by the Board in rendering its Decision. 37 C.F.R. § 41.79(b)(1). Here, however, the Patent Owner does not contend that the Board misapprehended or overlooked any point in connection with the Decision. Instead, the Patent Owner offers the following as the basis for its rehearing request: The claim construction adopted by the Board is broader tha[n] that used by the Examiner as the basis for the Examiner’s rejections as set forth by the Examiner in the ACP and confirmed by the Examiner in the RAN. As such, the Patent Owner has not heretofore had an opportunity to amend the claims in response to the claim construction set forth in the Decision. The Patent Owner therefore respectfully requests that the Board designate its affirmance of the Examiner’s rejections of independent claim 1 and dependent claims 2-15 and 20-25, 1 See “Request for Rehearing Pursuant to 37 CFR 41.79” filed June 19, 2013 (“Reh’g Req.”) 2 See Requester’s “Comments” submission filed July 19, 2013. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 3 which are based on the new claim construction set forth by the Board in the Decision, as new grounds of rejection pursuant to 37 CFR 41.77. Reh’q Req., p. 1. At issue in construing the claims was whether the phrase “by an interface server computer” appearing in the preamble of claim 1 mandated that all steps of the claimed method must be performed by an interface server computer. In the Decision, we agreed with the Requester that, under the guise of broadest reasonable interpretation, the general reference in the preamble of claim 1 of “by an interface server computer” does not require that each and every step recited in the method need be performed by such a computer. Decision, pp. 11-14. At the outset, it is not evident that the Examiner’s rejections were premised necessarily on an interpretation of the preamble of claim 1 as requiring that all steps of the claimed method must be performed by an interface server computer. It is clear from the record that the claim scope advocated by the Patent Owner in connection with the “by said interface server computer” recitation of the preamble was a source of dispute between the Patent Owner and the Requester throughout the proceeding, with the Requester commenting that claim 1 does not require that all recited steps must be performed by the computer. The Examiner, in adopting the rejections proposed by the Requester, expressed agreement with the comments articulated by the Requester.3 3 See, e.g., Action Closing Prosecution (mailed April 15, 2011), p. 54, and Right of Appeal Notice (mailed August 19, 2011), p. 55. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 4 In any event, “the ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). Even assuming that the Examiner construed claim 1 of the ’122 patent more narrowly than did the Board in the Decision, our affirmance of the Examiner’s rejection based on a broader interpretation of the limiting effect of the claim preamble did not alter the thrust of rejection. Indeed, in so affirming the rejection, our construction was not based on any underlying facts that were additional to, or different from, those on which the Examiner relied. In that regard, even if our interpretation of claim 1 may be broader in some respect, our affirmance of the rejection did not draw from the teachings of the prior art any more content than that which was relied on by the Examiner. Furthermore, contrary to the Patent Owner’s assertions, the Patent Owner had ample opportunity during the course of this reexamination proceeding to revise the claims by way of amendment. As noted above, the dispute between the Patent Owner and the Requester in connection with the “by said interface server computer” recitation was evident throughout the course of the proceeding. The Patent Owner’s decision to stand on its interpretation of claim 1’s preamble in connection with the corresponding claim scope urged was not due to a lack of opportunity to amend the claims. Accordingly, for the foregoing reasons, we decline to modify our Decision. Appeal 2012-010411 Reexamination Control 95/001,411 Patent 7,644,122 5 III. ORDER The Patent Owner’s Request for Rehearing has been considered, but the relief requested therein is denied. DENIED PATENT OWNER: TECHCOASTLAW 2032 Whitley Avenue Hollywood, CA 90058 THIRD PARTY REQUESTER: HEIDI KEEFE, COOLEY LLP 3175 Hanover Street Palo Alto, CA 94304