Ex Parte 7941327 et al

Patent Trial and Appeal Board

Sep 9, 2016

90013271 (P.T.A.B. Sep. 9, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO.
90/013,271
60683 7590
Robert Bosch LLC
FILING DATE
06/13/2014
10/07/2016
1800 W. Central Road
Muunl Prospect, IL 60056
FIRST NAMED INVENTOR
7941327
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P .0. Box ! 450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 737.577REX4 6407
EX.A.MINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/07/2016 . 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
Ex Parte HEAL TH HERO NETWORK, INC.
Appeal2016-004972
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Patent 7,941,327 B2
Technology Center 3900
JEFFREY B. ROBERTSON, Administrative Patent Judge.
DECISION ON PETITION
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Patent 7,941,327 B2
This is a decision denying Patent Owner's "REQUEST FOR
EXTENSION OF TIME UNDER 37 C.F.R. § 1.550(c)," filed September 15,
2016 ("Petition"). The petition requests that the Office extend the time
period for filing a response by one month. Petition 1. The petition fee of
$ 200 in accordance with 3 7 C.F .R. § l .17(g) was charged to Patent Owner's
deposit account on September 16, 2016 ..
FINDINGS
1. On June 13, 2014, Kevin W. McCabe, a third party requester, filed a
Request for ex parte reexamination of claims 1-9, 24-27, 38, and 52-58 of
the '327 patent, which was granted on July 16, 2014.
2. On September 9, 2016, the Patent Trial and Appeal Board ("Board")
entei;ed a Decision on appeal in this ex parte reexamination proceeding,
reversing the Examiner's rejection and including a new ground of rejection.
Decision 1, 7-10.
2. The Decision on appeal, citing 37 C.F.R. § 41.50(b), notes that
appellant has two months from the date of the Decision to file a response
either requesting reopening of prosecution before the Examiner or requesting
a rehearing. Id. at 11.
3. On September 15, 2016, the petition requesting an extension of time
of one month was filed.
DISCUSSION
In its petition, Patent Owner requests an extension of time of one
month to submit a response to the Board's Decision on appeal mailed
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September 9, 2016, in order "to acquire evidence regarding the fact findings
of the Board in its new ground of rejection." Petition 2. Patent Owner states
that
The new grounds of rejection contain specific findings of
fact that will require analysis and testimony by an expert, and
possibly other evidence. Such specific findings include, but are
not limited to, the Board's finding that modifying the invention
of claim 1 of U.S. patent 8,015,030 ("Brown '030") to send
"trends" to an authorized individual would be an obvious
variant. (Decision at p.8). Another fact finding is the Board's
determination that one cannot generate trends "based on"
communicated data without generating trends "from" the
communicated data. (Id. at pp.8-9). Another example is the
Board's finding that the proposed modification of the claims of
Brown '030 produces a predictably useful result. (Id. at p.9).
The Patent Owner requires time to evaluate these and
other fact findings of the Board in support of the new ground of
rejection. The Patent Owner requires time to identify and retain
an expert to evaluate the Board's factual conclusions. No expert
has yet been obtained in this case, as hone has been previously
necessary. The Patent Owner also requires time for the expert to
review not only the file history of the instant patent and this
proceeding, but potentially the file histories of one or more of
the sixteen related proceedings identified in Section II of the .
. Patent Owner's Appeal Brief filed November 25, 2015. 1 The
Patent Owner further requires sufficient time for the expert to
draft a declaration, and time to draft the response itself.
Id. at 2-3.
1 See pages 3 through 4 of the Appeal Brief filed November 25, 2015 for the
list of related proceedings and applications before the Office.
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RELEVANT AUTHORITY
35 U.S.C. § 305 provides:
After the times for filing the statement and reply provided for
by section 304 have expired, reexamination will be conducted
according to the procedures established for initial examination
under the provisions of sections 132 and 133. In any
reexamination proceeding under this chapter, the patent owner
will be permitted to propose any amendment to his patent and a
new claim or claims thereto, in order to distinguish the
invention as claimed from the prior art cited under the
provisions of section 301, or in response to a decision adverse
to the patentability of a claim of a patent. No proposed amended
or new claim enlarging the scope of a claim of the patent will
be permitted in a reexamination proceeding under this chapter.
All reexamination proceedings under this section, including any
appeal to the Patent Trial and Appeal Board, will be conducted
with special dispatch within the Office.
37 C.F.R. § 41.50 provides:
(a)(l) Affirmance and reversal. The Board, in its
decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by
the examiner. The affirmance of the rejection of a claim on any
of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground
specifically reversed. The Board may also remand an
application to the examiner.
(2) If a substitute examiner's answer is written in
response to a remand by the Board for further consideration of a
rejection pursuant to paragraph (a)(l) of this section, the
appellant must within two months from the date of the
substitute examiner's answer exercise one of the following two
options to avoid sua sponte dismissal of the appeal as to the
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claims subject to the rejection for which the Board has
remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be
reopened before the examiner by filing a reply under § 1.111 of .
this title with or without amendment or submission of affidavits
(§§ 1.130, 1.131or1.132 of this title) or other Evidence. Any·
amendment or submission of affidavits or other Evidence must
be relevant to the issues set forth in the remand or raised in the
substitute examiner's answer. A request that complies with this
paragraph (a) will be entered and the application or the patent
under ex parte reexaminatioi::i will be reconsidered by the
examiner under the provisions of § 1.112 of this title. Any
request that prosecution be reopened under this paragraph will
be treated as a request to wit)Jdraw the appeal.
(ii) Maintain appeal. Request that the appeal be
maintained by filing a reply brief as provided in § 41.41. If such ·
a reply brief is accompanied by any amendment, affidavit or
other Evidence, it shall be treated as a request that prosecution
be reopened before the examiner under paragraph (a)(2)(i) of
this section.
(b) New ground of rejection. Should the Board have
knowledge of any grounds not involved in the appeal for
rejecting any pending claim, it may include in its opinion a
statement to that effect with its reasons for so holding, and
designate such a statemei:it as a new ground of rejection of the
claim. A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review. When the
Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the prosecution
will be remanded' to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground,ofrejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 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
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
( c) Review of undesignated new ground of rejection.· Any
request 'to seek review of a panel's failure to designate a new
ground of rejection in its decision must be raised by filing a
request for rehearing as set forth in§ 41.52. Failure of appellant
to timeiy fiie such a request for rehearing wiil constitute a
waiver of any arguments that a decision contains an
undesignated new ground of rejection.
( d) Request for briefing and information. The Board may
order appellant to additionally brief any matter that the Board
considers to be of assistance in reaching a reasoned decision on
the pending appeal. Appellant will be given a time period
within which to respond to such an order. Failure to timely
comply with the order may result in the·~ua· sponte dismissal of
the appeal.
( e) Remand not final action. Whenever a decision of the
Board includes a remand, that decision shall not be considered
final for judicial review. When appropriate, upon conclusion of
proceedings on remand before the examiner, the Board may
I
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enter an order otherwise making its decision final for judicial
review.
(f) Extensions of time. Extensions of time under
§ 1.13 6( a) of this title for patent applications are not applicable
to the time periods set forth in this section. See § l.136(b) of
this title for extensions of time to reply for patent applications
and §l.550(c) of this title for extensions of time to reply for ex
parte reexamination proceedings.
The time for taking any action by a patent owner in an ex parte
reexamination proceeding may be extended as provided in this
paragraph.
(1) Any request for such an extension must specify the
requested period of extension and be accompanied by the
petition fee set forth in § l. l 7(g).
(2) Any request for an extension in a third party
requested ex parte reexamination must be filed on or before the
day on which action by the patent owner is due, and the mere
filing of such a request for extension will not effect the
extension. A request for an extension in a third party requested
ex parte reexamination will not be granted in the absence of
sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner
requested or Director ordered ex parte reexamination for up to
two months from the time period set in the Office action must
be filed no later than two months from the expiration of the
time period set in the Office action. A request for an extension
in a patent owner requested or Director ordered ex parte
reexamination for more than two months from the time period
set in the Office action must be filed on or before the day on
which action by the patent owner is due, and the mere filing of
a request for an extension for more than two months from the
time period set in the Office action will not effect the extension.
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The time for taking action in a patent owner requested or
Director ordered ex parte reexamination will not be extended
for more than two months from the time period set in the Office
action in the absence of sufficient cause or for more than a
reasonable time.
( 4) The reply or other action must in any event be filed
prior to the expiration of the period of extension, but in no
situation may a reply or other action be filed later than the
maximum time period set by statute.
(5) See§ 90.3(c) of this title for extensions of time for
filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit or for commencing a civil action.
MPEP § 2265(IV) and (VI) provides in pertinent part:
IV. THIRD PARTY REQUESTED EX PARTE
REEXAMINATIONS
The extension of time practice under 37 CFR l.550(c) for
patent owner responses in an ex parte reexamination proceeding
which has been requested by a third party, i.e., a third party
requested ex parte reexamination, remains unchanged under the
rules and practices adopted in view of the Patent Law Treaty
(PL T). A third party requested ex parte reexamination is
initiated by a party other than the patent owner or the Office.
Thus, it is an "inter partes proceeding" under PL T Rule
12(5)(a)(vi). For this reason, the minimum reply period
provisions of the PL T do not apply to third party requested ex
parte reexaminations.
The patent owner must fiie a written request specifying the
requested period for extension (e.g., one month), and must file
the request, the required fee, and the response within the
specified period for extension. A request for an extension,
which must be accompanied by the required fee, may be filed
with or without the response.
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A. Requirements for a Showing of Sufficient Cause and for a
· Reasonable Time
Any request for an extension of time for a response by the
patent owner in a third party requested ex parte reexamination
must include a showing of sufficient cause, and the requested
extension must be for a reasonable time. See subsection VI
below.
"No cause" extensions of time for up to two months for filing a
response (see subsection V.A. below), or for filing an appeal
brief (see also subsection IV.C. below) are not available,
because the extension of time provisions of the PL T do not
apply to third party requested reexaminations. The mere filing
of a written request for an extension of time and the required
fee in a third party requested reexamination will not result in an
extension of time; i.e., will not effect the extension.·
B. Time for Filing
37 CFR 1.550(c) continues to provide that any request for an
extension in a third party requested ex parte reexamination must
be filed on or before the day on which action by the patent
owner is due. Because the extension of time practice for patent
owner responses in third party requested reexaminations
remains unchanged, "the day on which action by the patent
owner is due" continues to be no later than the day before the
date of expiration of the time period for response set in the
Office action. For example, if the Office action sets a one-
month period for response, any f'equest for an.extension of time
must be filed no later than one month from the mail date of the
Office action ..
C. Extension of Time for Filing a Notice of Appeal, an Appeal
Brief, or a Reply Brief
Extensions of time for filing a notice of appeal to the Patent
Trial and Appeal Board (PTAB), an appeal brief, or a reply
brief, are governed by 37 CFR 1.550(c).
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A notice of appeal is governed by 37 CFR l.550(c) in the same
manner as a response.
For the purposes of requesting an extension of time for filing an
appeal brief or a reply brief, the "the day on which action by the
patent owner is due" set forth in 37 CFR l.550(c) is the last day
of the time period permitted to file the brief. For example,
37 CFR 41.35(a) requires that an appeal brief must be filed
within two months from the date of the appeal. See MPEP
§ 1205. 37 CFR 41.41(a) governs the time for filing a reply
brief. See MPEP § 1208. See also MPEP § 2274, subsection III.
The request for an extension of time to file a notice of appeal,
an appeal brief, or a reply brief must include a showing of
sufficient cause, and the extension must be for a reasonable
time. See subsection VI below. The request must be filed as a
separate paper.
See MPEP § 1216 for specific guidance on the time for filing
the notice and reasons of appeal to the U.S. Court of Appeals
for the Federal Circuit or for commencing a civil action. See
also MPEP § 22 79.
VI. REQUIREMENTS FOR A SHOWING OF SUFFICIENT
CAUSE AND AN EXTENSION FOR A REASONABLE
TIME
Requests for any extension of time in third party requested
reexaminations, and requests for an extension of more than two
months from the time period set in the Office action in patent
owner requested or Director ordered reexaminations, must
include a showing of sufficient cause, and the extension must
be for a reasonable time.
Any evaluation of whether sufficient cause has been shown for
an extension must balance the need to provide the patent owner
with a fair opportunity to present an argument against any
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attack on the patent, and the requirement of the statute
(35 U.S.C. 305) that the proceeding be conducted with special
dispatch. ·
Any request for an extension of time, except for the "no cause"
extension in patent owner requested or Director ordered
reexamination provided in 37 CFR l.550(c), must fully state the
reasons therefor. The reasons must include a statement of what ·
action the patent owner has taken to provide a response as of
the date the request for extension is submitted, and why, in spite
of the action taken thus far, the requested additional time is
needed. The statement must include a factual accounting of
reasonably diligent behavior by all 'those responsible for
preparing a response to the outstanding Office action within the
statutory time period.
In patent owner requested and Director ordered reexaminations,
the patent owner already has the opportunity to obtain an
extension of time for up to two months from the time period set
in the Office action, without a showing of sufficient cause, i.e.,
a "no cause" extension. For this reason, requests for an ·
. extension of more than two months in patent owner requested
or Director ordered reexaminations are expected to be rare and
will only be granted in extraordinary situations.
However, in third party requested ex parte reexaminations, a
first request for an extension of time will generally be granted if
a sufficient cause is shown, and for a reasonable time specified
-usually one month. The reasons stated in the request will be
evaluated by the CRU.SPRS or TC Director, and the requests
will be favorably considered where there is a factual accounting
.of reasonably diligent behavior by all those responsible for
preparing a response within the statutory time period. Second or
subsequent requests for an extension of time and requests for an
extension of more than one month in third party requested
reexaminations will only be granted in extraordinary situations.
A request for an extension of the time period to file a petition
from the denial of a request for reexamination can only be
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entertained by filing a petition under 3 7 CFR 1.183 with the
appropriate fee to waive the time provisions of 3 7 CFR
l.515(c). Since the examination process (for reexaminations
ordered under 35 U.S.C. 304 or under 35 U.S.C. 257) is
intended to be essentially ex parte, the third party requesting
reexamination can anticipate that requests for an extension of
time to file a petition under 37 CFR l.515(c) will be granted
only in extraordinary situations.
ANALYSIS
Patent Owner's request for an extension of time has been considered
fully. The Decision on appeal includes a new ground of rejection2 under
37 C.F.R. § 41.50(b) as follows:
Claims 1, 2, 7, and 52-54 are rejected under the judicially-
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 14 of U.S. Patent No. 8,015,030 B2
("Brown '030") as evidenced by Merriam-Webster.corn's definition
of "communication" ("M-W.")
Decision 3, 7.
In accordance with 37 C.F.R. § 41.50(f), the time period set forth in
this section is subject to the extension of time provisions of§ l.550(c) of this
title to reply for ex parte reexamination proceedings. First requests for
extensions of these time periods will be granted for sufficient cause, and for
a reasonable time specified, usually one month. The reasons stated in the
2 Although the new ground of rejection uses the same basis for rejecting
claims 1, 2, 7, and 52-54, the evidence presented relies on claims 1 and 14
of Brown '030 and not claim 31 as the Examiner presented. See Decision
7-10.
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/
request will be evaluated~ and the request will be favorably considered
where there is a factual accounting of reasonably diligent behavior by all
those responsible for preparing a response or comments within the statutory
time period. Second or subsequent requests for extensions of time, or
requests for more than one month, will be granted only in extraordinary
situations.
Patent Owner fails to inclu.de (A) a statement of what action(s) the
Patent Owner has taken to provide a response as of the date the· request for
extension is submitted, and (B) why, in spite of the action(s) taken thus far,
the requested additional time is needed. The statement of (A) must provide
a factual accounting of reasonably diligent behavior by all those responsible
~
for preparing a response to the outstanding Office action within the statutory
time period. In its petition, Patent Owner explains time is required (I) to
evaluate the Board's determinations, (2) to retain an expert to evaluate the
Board's statements, (3) for the expert to review file history this proceeding
and those identified in the Appeal Brief, and ( 4) to draft a declaration and
response. Petition 3. However, Patent Owner does not explain what
action(s) it has taken thus far to provide a response to date, and why, in spite
of the action taken thus far, the requested additional time is needed. This
fails to show ~easonably diligent behavior by all those responsible for
preparing a response'to the outstanding Offic~ action within the statutory
time period.
'
Not<'.lbly, the appeal was taken from an obviousness-type double
patenting rejection based on Brown '030 and M-W and the new ground of
rejection is based on the same references, but excludes claim 31 of Brown
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'030, as presented by the Examiner. Compare Decision 1, 3 with id. at 7-10.
Balancing the requirement set forth in 35 U.S.C. § 305 that the proceeding
be conducted with special dispatch within the Office, Patent Owner has
failed to establish that sufficient cause exists for extending the due date one
month for Patent Owner to request reopening of prosecution in response to
the new grounds of rejection or to request a rehearing.
Accordingly, the present petition is denied.
DECISION
In view of the foregoing, the present petition is DENIED for an
extension of time of one month.
The request to reopen prosecution or a request for hearing pursuant to
37 C.F.R. § 41.50(b) is due November 9, 2016.
Patent Owner:
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
Third-Party Reguester:
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
11f\f\1'..TDUT Vl\DV A "'\T"'C1'..TT TD 1'.T UT
1 lVV l"ID VV .l Vl~~ ~ V .Lll"IU.Ll, .l"I. VY.
WASHINGTON, DC 20005
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