Ex Parte 7777783 et al

Patent Trial and Appeal Board

Jan 29, 2015

95001525 (P.T.A.B. Jan. 29, 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.
95/001,525 01/21/2011 7777783 017874-0003 4939
38790 7590 01/29/2015
THE SMALL PATENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
EXAMINER
TRAN, HENRY N
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/29/2015 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
____________

VIDSYS, INC.,
Requester,

v.

PROXIMEX CORPORATION,
Patent Owner.
____________

Appeal 2014-009349
Reexamination Control 95/001,525
Patent 7,777,783 B1
Technology Center 3900
____________

Before MARC S. HOFF, STEPHEN C. SIU, and IRVIN E. BRANCH,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Requester (VidSys, Inc.) appeals under 35 U.S.C. §§ 134 and 315 the
Examiner’s refusal to adopt rejections of claims 1–24 over various
references.
1
3PR App. Br. 8–10. We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An Oral Hearing was conducted on December 3, 2014.

STATEMENT OF THE CASE
This proceeding arose from a January 21, 2011 request by VidSys,
Inc. (“Requester”) for an inter partes reexamination of the claims of U.S.
Patent 7,777,783 B1, titled “Multi-Video Navigation” and issued to Hu Chin
and Ken Prayoon Cheng, on August 17, 2010 (“the’783 patent”).
The ’783 patent describes a method and system for managing data
from multiple video sources. Spec. 1:6–8.

Claim 1 reads as follows:

1. A method comprising:
identifying a first member of a plurality of cameras;
identifying a first topological relationship between the first
member of the plurality of cameras and a second member of the
plurality of cameras;
identifying a second topological relationship between the first
member of the plurality of cameras and a third member of the
plurality of cameras, the first topological relationship and the second
topological relationship being relative to a viewpoint of the first
camera;
presenting video data generated using the first member of the
plurality of cameras in a user interface, the user interface including a
first user control and a second user control;

1
We cite to Requester’s “Appellant’s Appeal Brief” dated January 7, 2013
(“3PR App. Br.”).
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associating the second member of the plurality of cameras with
the first user control based on the topological relationship between the
first member of the plurality of cameras and the second member of the
plurality of cameras;
associating the third member of the plurality of cameras with
the second user control based on the topological relationship between
the first member of the plurality of cameras and the third member of
the plurality of cameras;
receiving a user selection of the first user control;
presenting video data generated using the second member of the
plurality of cameras in the user interface based on the received user
selection;
associating the first user control and the second user control
with members of the plurality of cameras based on topological
relationships relative to a viewpoint of the second member of the
plurality of cameras; and
presenting the first user control and the second user control in
the user interface in positions representative of the first topological
relationship and the second topological relationship, where in the first
user control and the second user control are presented in positions
around a presentation of the video data generated using the first
member of the plurality of cameras.

The cited references are as follows:

Coutta US 4,120,004 Oct. 10, 1978
Gormley US 5,258,837 Nov. 2, 1993
Girgensohn ’974 US 7,149,974 B2 Dec. 12, 2006

White US 7,196,722 B2 Mar. 27, 2007
Lin US 7,242,423 B2 Jul. 10, 2007
Roberts US 7,295,228 B2 Nov. 13, 2007
Maruya US 7,746,380 B2 Jun. 29, 2010

Girgensohn ’706 US 2008/0088706 A1 Apr. 17, 2008
Buehler US 2010/0002082 A1 Jan. 7, 2010
Girgensohn ’978 US 2006/0284978 A1 Dec. 21, 2006

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Redstone Integrated Solutions – Products and Services (“RPS I”).

Redstone Integrated Solutions, Balancing Tomorrow’s Technology,
2003 (“RPS II”)

Requester appeals the following non-adopted rejections:
1) Claims 1–24 under 35 U.S.C. § 102(e) as anticipated by
Girgensohn ’706 (3PR App. Br. 8);
2) Claims 1 and 3–8 under 35 U.S.C. § 103(a) as unpatentable over
Maruya and the combination of Girgensohn ’978, Lin , and any
one of (1) White, (2) Roberts, or (3) the combination of RPS I and
RPS II (3PR App. Br. 8–9);
3) Claim 1 under 35 U.S.C. § 102(e) as anticipated by White; claim 2
under 35 U.S.C. § 103(a) as unpatentable over White, Girgensohn
’706, and Gormley; and claims 3–8 under 35 U.S.C. § 103(a) as
unpatentable over White, Girgensohn ’978, and Lin (3PR App. Br.
9);
4) Claim 1 under 35 U.S.C. § 102(e) as anticipated by Roberts; claim
2 under 35 U.S.C. § 103(a) as unpatentable over Roberts,
Girgensohn ’706, and Gormley; and claims 3–8 under 35 U.S.C. §
103(a) as unpatentable over Roberts, Girgensohn ’978, and Lin
(3PR App. Br. 9);
5) Claim 1 under 35 U.S.C. § 102(b) as anticipated by RPS or 35
U.S.C. § 103(a) as unpatentable over RPS I and RPS II; claim 2
under 35 U.S.C. § 103(a) as unpatentable over RPS I, RPS II,
Girgensohn ’706, and Gormley; and claims 3–8 under 35 U.S.C. §
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103(a) as unpatentable over RPS I, RPS II, Girgensohn ’978, and
Lin (3PR App. Br. 9);
6) Claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over Buehler
and Girgensohn ’706; Buehler, White, Girgensohn ’978, and Lin;
or Buehler, Roberts, Girgensohn ’978, and Lin (3PR App. Br. 9–
10);
ISSUE

Did the Examiner err in refusing to adopt each of the proposed
rejections of claims 1–24?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

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ANALYSIS

Girgensohn ’706 – Claims 1-24

As previously indicated, Requester appeals the non-adoption of a
rejection of claims 1-24 as anticipated by Girgensohn ’706; claim 2 as
unpatentable over Girgensohn ’706 and Gormley or Girgensohn ’706,
Gormley, RPS I, and RPS II; claim 1 as unpatentable over Girgensohn ’706,
Roberts, and Gormley; and claims 1–8 as unpatentable over Girgensohn
’706 and Buehler. The Examiner does not adopt these proposed rejections
with respect to Girgensohn ’706 (alone or in combination with other
references) because “the patent owner’s declaration under 37 CFR § 1.131
has been sufficiently effective for disqualifying Girgensohn ’706 as a prior
art reference.” RAN 23. Substantial evidence supports the Examiner’s
reasonable fact finding in determining that Patent Owner’s declaration under
37 C.F.R. § 1.131 is sufficient for disqualifying Girgensohn ’706 as a prior
reference. For example, Mr. Hu “Harrison” Chin, an inventor of the ’783
patent, avers that he “participated in a demonstration” of the claimed
invention using software and videos that demonstrate that the claimed
invention was reduced to practice prior to the priority date of
Girgensohn ’706 (i.e., prior to October 13, 2006). See, e.g., Declaration
under 37 C.F.R. § 1.131 (“Inventor’s Dec.,” “PO’s Declaration,” or
“Declaration”) ¶¶ 20, 22 (citing Appendix C).
Requester argues that “PO’s Declaration is insufficient to antedate
Girgensohn ’706 . . . because there is no independent non-inventor
corroboration of the testimony therein.” 3PR App. Br. 27. Requester further
argues “that Federal Circuit precedent unequivocally requires independent
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non-inventor corroboration of a declaration that attempts to antedate a
reference.” Id. 27-28 (citing In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.
2011)). In NTP, to “‘corroborate’ the inventor’s testimony,” the patentee
relied upon various documents, including “the Telefind E-Mail Integration
document.” NTP, Inc., 654 F.3d at 1291. In the present case, as in NTP, the
inventors rely on documents demonstrating the actual reduction to practice
of executable software files that perform the claimed invention. See, e.g.,
Declaration, ¶¶ 16, 17, 19, 20, 21, 22; Appendix C. In addition, the cited
computer files pre-date the priority date of Girgensohn ’706. See, e.g.,
Appendix C, Screenshot 1. Thus, even if Requester’s theory is correct that
“corroboration” of the inventor’s testimony of the type described in NTP is
required, we note that the inventors have provided such “corroboration.”
Requester argues that the Declaration is improper because it allegedly
“does not identify which inventor is making which statement” and because
“the inventors do not even have first-hand knowledge of their alleged
conception and reduction to practice.” 3PR App. Br. 31. We are not
persuaded by Requester’s argument. Even if Requester is correct that a
declaration under 37 C.F.R. § 1.131 must state “which inventor is making
which statement,” we note that the Declaration states that “I/We, Hu
‘Harrison’ Chin and Ken Prayoon Cheng, declare and state the following . .
.” Declaration, ¶ 1. Hence, contrary to Requester’s contention, the
Declaration identifies Hu “Harrision” Chin and Ken Prayoon Cheng as the
inventors making the statements in the Declaration.
In addition, Requester provides insufficient evidence to demonstrate
persuasively that the inventors “do not even have first-hand knowledge of
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their alleged . . . reduction to practice,” as alleged by Requester. 3PR App.
Br. 31. For example, the inventors testify that “[b]y September 21, 2006,
Mr. Chin had helped develop a standard demonstration of the Surveillint 1.5
EZ Track pre-Beta-2 software” and “used the September 13, 2006 build . . .
in the development of the standard demonstration.” Declaration, ¶¶ 16-17.
The inventors also testify that “[i]n the process of developing the standard
demonstration, Mr. Chin used the September 13, 2006 build of the . . .
software” and “participated in a demonstration at Proximex’s headquarters.”
Declaration, ¶¶ 19-20. We do not see, and Requester has not sufficiently
demonstrated, how such statements, for example, do not demonstrate that the
inventors “have first-hand knowledge of their alleged . . . reduction to
practice.”
Requester argues that the Declaration fails to demonstrate a reduction
to practice of the claimed invention because “there is no testimony
establishing that those documents are ‘original exhibits or drawings or
records, or photocopies thereof’.” 3PR App. Br. 31. We are not persuaded
by Requester’s argument. The inventors testify, for example, that
“Appendix C includes Screenshot 1 which shows a directory listing of files
that represent the build of the software . . . . [that] have a last modified date
of September 13, 2006.” Declaration ¶ 15 (citing Appendix C). Appendix C,
cited by the inventors, is a photocopy of a document that is consistent with a
directory listing of files, software code, and screenshots, for example.
Requester argues that the Declaration fails to support a reduction to
practice of the claimed invention by the inventors because “the inventors do
not provide any testimony or evidence that they prepared the slides [in
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Appendix A], caused them to be prepared, or supplied the information
included in them.” 3PR App. Br. 32. However, Requester does not assert or
demonstrate sufficiently that the inventors did not provide testimony or
evidence that they prepared the software files or screenshots as provided in
Appendix C.
Requester argues that “the documentary evidence relied upon by PO
must be ‘contemporaneous’ with the date of conception or reduction to
practice.” 3PR App. Br. 33. Hence, Requester argues that the evidence
provided by the inventors is not “contemporaneous” with the alleged date of
reduction to practice of the claimed invention. We are not persuaded by
Requester’s argument. For example, the alleged date of reduction to practice
of the claimed invention is September 2006, which is within the same time
frame as the date of the software files alleged to perform the claimed
invention (i.e., September 13, 2006). Given that the customary meaning of
the term “contemporaneous” is “at about the same time,” Requester does not
demonstrate that an alleged date of actual reduction to practice of September
2006 is not at about the same time (or contemporaneous) as September 13,
2006 (date of the finalized version of software used to perform the claimed
invention).
Requester argues that “PO’s Declaration does not demonstrate that the
method actually performed each step of the ’783 patent claims at any time
prior to October 13, 2006” but, according to Requester, “only speculates, on
information and belief, that the Logic performed these steps.” 3PR App. Br.
34. We are not persuaded by Requester’s argument. Even if the phrase “on
information and belief” indicates that inventors did not actually perform
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specific actions as Requester appears to allege, the inventors do not testify
performance of the claimed invention based “on information and belief.”
Rather, the inventors state “The Logic performed this step [of claim 1],” for
example. See e.g., Declaration, ¶ 24B–I.
Requester also argues that the inventors “cannot establish the
diligence required to prove prior invention.” 3PR App. Br. 36. Even if
inventors do not demonstrate diligence from the date of actual reduction to
practice to the date of filing of the patent application, Requester does not
demonstrate sufficiently that a showing of such diligence is required in a
declaration under 37 C.F.R. § 1.131. We are not persuaded by Requester’s
argument.
With respect to claims 9-24, the Examiner finds that “the patent
owner’s declaration under 35 C.F.R. § 1.131 has been sufficiently effective
for disqualifying Girgensohn ’706 as a prior art reference . . . against the
amended new claims 9-24.” RAN 25. Requester disputes the Examiner’s
conclusion because, according to Requester, “PO’s Declaration makes no
mention . . . of the subject matter of claims 9-24.” 3PR App. Br. 36.
However, as previously discussed, in the Declaration and accompanying
exhibits, the inventors demonstrate that software that was finalized prior to
the priority date of Girgensohn ’706 performed the claimed invention. For
example, the inventors state that the software contains “Logic” and that
“[t]he Logic performed,” for example, “identifying a first member of a
plurality of cameras,” “identifying a first topological relationship between
the first member of the plurality of cameras and a second member of the
plurality of cameras,” “the first topological relationship,” etc. See e.g.,
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Declaration, 24A-I. Claim 9, for example, recites “identifying a first
member of a plurality of cameras,” “identifying a first topological
relationship between the first member . . . and a second member of the
plurality of cameras,” and a “first topological relationship.” Requester does
not point out any specific deficiencies in the Declaration or assert or
demonstrate persuasively that the Examiner erred in determining that the
“the patent owner’s declaration under 35 C.F.R. § 1.131 has been
sufficiently effective for disqualifying Girgensohn ’706 as a prior art
reference . . . against the amended new claims 9-24.”
Hence, as stated above, substantial evidence supports the Examiner’s
reasonable fact finding in determining that Patent Owner’s declaration under
37 C.F.R. § 1.131 is sufficient to disqualify Girgensohn ’706 as a prior
reference. The Examiner did not err in refusing to adopt the rejections of
claims 1-24 over Girgensohn ’706, alone or in combination with other
references.

Buehler, White, Girgensohn ’978, and Lin – Claims 1–8

As previously indicated, Requester appeals the Examiner’s non-
adoption of the rejection of claims 1–8 as unpatentable over Buehler,
Girgensohn ’978, Lin and White. The Examiner does not adopt this
rejection of claims 1–8 because there is “no discussion of, nor concern with,
a viewpoint of any camera” in any of the cited references. RAN 23–24.
Buehler discloses a “user interface” that “includes a primary camera
pane that displays video image data captured by a primary video surveillance
camera.” ¶ [0010]. One of ordinary skill in the art would have understood
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that a video image from a camera would be in the “viewpoint” of that
camera. Neither the Examiner nor Patent Owner provides sufficient
evidence of a difference between the claimed “viewpoint” and the image
data from a camera of Buehler. Similarly, White discloses “images from
different cameras,” “each of the cameras is viewing the same event . . . from
a different angle and location.” White, Abstract; 1:38–41. Roberts discloses
“cameras images” and a “camera . . . to employ video signals from the . . .
video camera.” Roberts, 1:32, 44–46. Each of White and Roberts discloses
displaying images from a camera, the images being from a “viewpoint” of
the camera providing the image. One of ordinary skill in the art would have
understood that images from a camera is from the point of the view of the
camera providing the images. Neither the Examiner nor Patent Owner
explain sufficiently how an image from a camera would be from a viewpoint
other than the camera providing the image. Therefore, we disagree with the
Examiner that each of Buehler, White, or Roberts fails to disclose or suggest
a “viewpoint.”
The Examiner also finds that each of the cited references “fails to
associate user controls and present user controls on a user interface in
positions representative of the first and second topological relations as
claimed.” RAN 23–24. Claim 1, for example, recites a “user interface
including a first user control and a second user control,” “associating the
second member . . . with the first user control based on the topological
relationship between the first member . . . and the second member” and
“associating the third member . . . with the second user control based on the
topological relationship between the first member . . . and the third
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member.” We note that claim 1 does not recite or require presenting user
controls “in positions representative of the first and second topological
relations” as indicated by the Examiner. Claim 1 does not appear to restrict
the positioning of either the “first user control” or the “second user control”
within the user interface. Therefore, even if none of the prior art references,
alone or in combination, discloses or suggests specific positions of a first
and second user control within an interface or how such specific positions
are determined, we disagree with the Examiner’s determination that none of
the cited reference discloses or suggests the claimed invention.
In any event, even if the claim recited presenting user controls “in
positions representative of the first and second topological relations,” as
suggested by the Examiner, White discloses “[m]ultiple streams of data are
streamed to a user’s terminal” in which “each image is transmitted as a low
resolution thumbnail” and “displayed in a relatively large area on the
viewer’s screen.” White, 2:5–9, 15–16. Each of the images or thumbnails
“is available from . . . different cameras.” White, 1:38–40. In one example,
a “system . . . captures six images” that include “a top, a bottom, a left side,
a right side, a front side, and a back images.” White, 7:35–40, Fig. 9. Fig. 9
of White illustrates, for example, a “left side camera thumbnail” on the left
side of a “focus image.” “If the user clicks anywhere . . . the focus stream is
changed to a view window . . . which is centered at the point where the user
clicked.” White, 7:56–59. This results in “[a] new layout for the user’s
display” in which “the display is reconfigured.” White, 10:10, 14–15. In
other words, if White’s user selects the “left side camera thumbnail” of
Figure 9, the focus stream changes to provide the image from the “left side
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camera” (the “user control” of which – or the thumbnail – was previously
located on the left side of the focus image or stream – or “topological
relationship”).
Neither the Examiner nor Patent Owner demonstrates sufficiently that
the White reference differs from the purported claim limitation of
“presenting user controls in positions representative of the first and second
topological relations.” In both cases, “user controls” (or thumbnails) are
presented in a user interface and are located in positions in the user interface
representative of “topological relations” (i.e., relative locations between
cameras, such as on the left side).
Claim 3 recites stitching the video data generated using the first
member . . . to the video data generated using the second member of the
plurality of cameras, responsive to receiving the user selection (i.e., a user
selection of the first user control). Patent Owner argues that Lin fails to
disclose or suggest “stitch[ing] video from different cameras based on USER
SELECTION.” PO Resp. Br. 14. Requester argues that Girgensohn ’978
discloses “that the storyboard of keyframes provides an index for a user to
locate video of interest” and “[a] single Manga summary for all selected
cameras can be created by selecting keyframes from those cameras.” 3PR
App. Br. 46 (citing Girgensohn ’978 ¶¶ [0038], [0041]). Hence, Girgensohn
’978 discloses stitching video together from different cameras. Also, as
previously discussed, based at least on White, one of ordinary skill in the art
would have understood the practice of manipulating video images based on a
“user selection” (e.g., a user “clicks anywhere” and the “focus stream is
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changed” in response – White, 7:56-59). We are not persuaded by Patent
Owner’s argument.
Claim 5 recites automatically stitching the first video data and the
second video data to form a video sequence using a temporal offset to
automatically stitch the first video data and the second video data, the
temporal offset being based on an estimated time of travel of the target.
Patent Owner argues that Lin fails to disclose or suggest “us[ing] a time
parameter in connection with stitching video from cameras that are selected
by a user as required by [claim] 5” because, according to Patent Owner, Lin
only discloses a system that “automatically tracks objects and automatically
decides when to hand off the main video stream between different camera
views.” PO Resp. Br. 14. In other words, Patent Owner argues that Lin fails
to disclose or suggest forming a video sequence using a temporal offset
response to a selection by a user (as opposed to performing the method
“automatically”). As previously discussed, however, White, at least,
discloses displaying video data responsive to a user selection. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding claim 5, the Examiner finds that each of the cited
references fails to disclose or suggest “to automatically stitch video data to
form a video sequence using a temporal offset, which is based on an
estimated time of travel of the target.” RAN 24. Requester argues that Lin
discloses “a time duration parameter.” 3PR App. Br. 45 (citing Lin, 8:60-
64). As Requester explains, Lin discloses “a time duration parameter” that
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corresponds to “traversing between the first zone and each of the zones in
the set of linked zones.” Lin, 8:60–64. Neither the Examiner nor Patent
Owner explain sufficiently a difference between the “time duration
parameter” of Lin (that is based on “traversing” time between zones) and the
claim limitation of a “temporal offset” that is based on “time of travel,” as
recited in claim 5.
The Examiner erred in refusing to adopt the rejection of claims 1–8 as
obvious over Buehler, White, Girgensohn ’978, and Lin.

Requester’s other appealed grounds

Requester also appeals the non-adoption of the rejection of claims 1
and 3–8 as obvious over Maruya in various combinations with White,
Roberts, RPS I, RPS II, Girgensohn ’978, and Lin (3PR App. Br. 8–9);
claims 1–8 as either anticipated by either one of White, Roberts, or RPS I, or
obvious over any one of the combination of RPS I and RPS II or the
combination of White, Roberts, or the combination of RPS I and RPS II in
combination with Girgensohn ’978 and Lin (3PR App. Br. 9); or claims 1–8
as obvious over the combination of Buehler, Roberts, Girgensohn ’978 and
Lin (3PR App. Br. 9). We do not address the non-adoption of these
rejections because reversal of the rejection for claims 1-8 based on the
combination of Buehler, White, Girgensohn ’978 and Lin renders it
unnecessary to reach the propriety of the Examiner’s decision not to reject
those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009).

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CONCLUSION
We affirm the Examiner’s decision not to adopt the rejection of claims
1-24 as anticipated by Girgensohn ’706 ; claim 2 as unpatentable over
Girgensohn ’706 and Gormley or Girgensohn ’706, Gormley, RPS I, and
RPS II; claim 1 as unpatentable over Girgensohn ’706, Roberts, and
Gormley; and claims 1–8 as unpatentable over Girgensohn ’706 and
Buehler. However, we reverse the Examiner’s decision not to adopt the
rejection of claims 1–8 as obvious over the combination of Buehler, White,
Girgensohn ’978, and Lin.
Pursuant to 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 ground of rejection and state with
particularity the points believed to have been
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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 times 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. §§ 141-144 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 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for
extensions of time in this inter partes reexamination proceeding are
governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
Appeal 2014-009349
Reexamination Control 95/001,525
Patent 7,777,783 B1

19
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

Appeal 2014-009349
Reexamination Control 95/001,525
Patent 7,777,783 B1

20
Ack

Patent Owner:

THE SMALL PATENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105

Third Party Requester:

DAVID R. YOHANNAN, ESQ.
KELLEY DRYE & WARREN LLP
3050 K STREET, NW, SUITE 400
WASHINGTON, DC 20007