Ex Parte Abecassis

Patent Trial and Appeal Board

Jul 28, 2017

13964196 (P.T.A.B. Jul. 28, 2017)

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.
13/964,196 08/12/2013 Max Abecassis 9447
117279 7590
CustomPlay LLC
190 Congress Park Drive
Suite 200
Delray Beach, EL 33445
EXAMINER
TRAN, LOI H
ART UNIT PAPER NUMBER
2484
MAIL DATE DELIVERY MODE
07/28/2017 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 MAX ABECASSIS
Appeal 2016-006145
Application 13/964,1961
Technology Center 2400
Before JEFFREY S. SMITH, JON M. JURGOVAN, and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on Rehearing in Appeal No. 2016-006145. In a
Decision entered March 30, 2017 (“Decision”) in relation to the above-
captioned appeal, we affirmed the Examiner's decision rejecting claims 1—5,
8—12, 14—16, and 18—20 under 35 U.S.C. § 103(a) as unpatentable over
Mclntire and Chiu; reversed the Examiner's decision rejecting claims 7, 13,
and 17 under 35 U.S.C. § 103(a) as unpatentable over Mclntire and Chiu;
affirmed the Examiner's decision rejecting claim 6 under 35 U.S.C. § 103(a)
as unpatentable over Mclntire, Chiu, and Angiolillo; and entered a new
1 Appellant identifies CustomPlay, LLC as the real party in interest. (Appeal
Br. 1.)
Appeal 2016-006145
Application 13/964,196
ground of rejection of claims 7, 13, and 17 under 35U.S.C. § 112, second
paragraph, as indefinite.
Appellant has requested rehearing of our Decision with respect to the
new grounds of rejection. Requests for Rehearing are limited to matters
misapprehended or overlooked by the Board in rendering the original
decision. 37 C.F.R. § 41.52(a)(1). New arguments responding to a ground
of rejection designated by the Board as a new ground are permitted. 37
C.F.R. § 41.52(a)(3).
We have reconsidered our Decision regarding the claims in light of
Appellant’s comments in the Request for Rehearing (“Request”). We grant
the Request to the extent that we consider the Appellant’s arguments infra,
but DENY the request to modify our Decision. We incorporate our earlier
Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).
ANALYSIS
In our Decision, we entered a new ground of rejection regarding
claims 7, 13, and 17, finding that the limitation of a step of “resuming the
playing [of a video] at a location that is responsive to an amount of time that
the playing has been paused” (“the disputed limitation”) is indefinite.
(Decision 9—11.)
Appellant argues that (a) the Board erred in finding the Examiner’s
claim interpretation plausible (Request 10-18); (b) the Board erred in
concluding that the disputed limitation, read in light of the Specification, is
indefinite (Request 18—23); (c) the Board erred in not resolving the level of
ordinary skill in the art (Request 23—25); and (d) the Board erred in
“ignoring the overwhelming findings of the Examiners regarding the claims’
definiteness.” (Request 25—28.)
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Appeal 2016-006145
Application 13/964,196
Appellant argues that the Board erred in finding the Examiner’s claim
interpretation plausible and in failing to offer a plausible claim construction.
(Request 10—23.) While the Decision cited the precedential opinion in
Miyazaki that a claim is indefinite if “amenable to two or more plausible
claim constructions” (Decision at 10, citing Ex parte Miyazaki, 2008 WL
5105055 at *5 (BPAI Nov. 19, 2008)), our finding was specifically that “we
find no disclosure in the [Specification or indication of what it means for a
location to be responsive to an amount of time,” and that “we find no
support in the Specification for the provided example [in the Appeal Brief]
of a location ‘responsive to an amount of time.’” (Decision 10—11.) Thus
Appellant’s arguments relating to any supposed endorsement of the
Examiner’s claim construction or the absence in the Decision of a “plausible
claim construction” are unpersuasive of error.
Appellant argues that our discussion of the indefmiteness of the claim
limitation includes several uses of the term “responsive” from the
Specification, but that “[e]ven, if arguably, a type of term of art such as
‘responsive’ has a nuanced meaning in one context and a differently nuanced
meaning in a different context” such term may still be definite. (Request
19.) Appellant argues that “in complex methodologies and systems, it is
seldom the case that the result is ‘caused by’ a single step or element as the
Decision urges.” (Id.) Our Decision however, does not “urge” or adopt
“caused by” as the meaning for “responsive” in the disputed limitation.
(See, generally, Decision 9-12.) Rather, we note that different uses of the
term “responsive” with different meanings occur in the Specification. (Id. at
11.) Appellant cites to paragraph 159 in the Specification as unambiguous
intrinsic evidence that “responsive” cannot mean “caused by.” (Request 20—
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Appeal 2016-006145
Application 13/964,196
21.) Appellant notes that “resuming the playing [of a video] at a location
that is responsive to an amount of time that the playing has been paused”
(Claim 1) does not mean “resuming the playing at a location that is
exclusively responsive to, caused by, or determined by” the given amount of
time. (Request 21.) However, Appellant’s arguments regarding “caused by”
do not persuade us that one skilled in the art would know with reasonable
certainty the scope of the invention claimed. Thus, we are not persuaded by
the Appellant’s arguments that the claim is not indefinite.
We are not persuaded by Appellant’s statement that the Board has not
made a finding regarding the issue of the level of ordinary skill in the art,
and has made findings regarding indefmiteness relating to “a person with no
skill in the relevant art” and “with less than average creativity and common
sense” and yet regarding obviousness considered only the view of a “person
of exceptional skill in the relevant art.” (Request 24.) Appellant cites
MPEP sections relating to obviousness determinations. {Id. at 23—24, citing
MPEP 2141.) With respect to the indefmiteness determination at issue,
however, Appellant’s general arguments do not identify any error in the
Decision relating to the level of skill in the art.
Finally, we note but are not persuaded by Appellant’s citation of other
instances in which examiners have examined the disputed claim limitation
and not found it to be indefinite. With respect to other related cases, our
authority to review does not extend to these cases, but only to the instant
application. “It is well settled that the prosecution of one patent application
does not affect the prosecution of an unrelated application.” {In re
McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (citing In re Wertheim, 541
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Appeal 2016-006145
Application 13/964,196
F.2d 257, 264 (CCPA 1976) (“It is immaterial in ex parte prosecution
whether the same or similar claims have been allowed to others.”)
In view of the above, we find no error in the rejection of claims 7, 13,
and 17 under 35 U.S.C. § 112, second paragraph, as indefinite.
CONCLUSION
Nothing in Appellant’s request has persuaded us that we have
overlooked or misapprehended previous arguments made by Appellant or
erred in entering a new ground of rejection for claims 7, 13, and 17.
Accordingly, we deny the request for Rehearing.
DECISION
To summarize, our decision is as follows:
We have CONSIDERED the Request but DENY the request that we
withdraw the new grounds of rejection of claims 7, 13, and 17 under 35
U.S.C. § 112, second paragraph, as indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
DENIED
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