Ex Parte Achtermann et al

Patent Trial and Appeal Board

Feb 14, 2013

11456225 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY MARK ACHTERMANN, ANDREW WILLIAM
LUCCHESI, NAVIN D. MANOHAR, and VICTOR GEE YIU
____________________

Appeal 2010-0094681
Application 11/456,225
Technology Center 2400
____________________

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
In papers filed April 19, 2012, Appellants request a rehearing under
37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent
Trial and Appeal Board (Board), dated February 19, 2013. In the Decision,
we affirmed the Examiner’s rejection of claims 1-20. (Dec. 7.)

1 The real party in interest is International Business Machines, Corp. (App.
Br. 2.)
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ANALYSIS
In the Request for Rehearing (“Request”), Appellants first allege that
the Board erred by mischaracterizing Appellants’ primary argument
presented in the Appeal Brief for patentability of claim 1. (Req. Reh’g. 2-3.)
In particular, Appellants argue that the Board mischaracterized Appellants’
primary argument as being related to a distinction between receiving already
rendered messages versus receiving messages to be rendered. Then, the
Board found such distinction to be directed to non-functional descriptive
material, and gave it no patentable weight. In contrast, Appellants submit
that their primary argument is directed to “updating a source object of a
secondary web page associated with a primary webpage with information
regarding a message to be rendered for display on the primary web page,
wherein the primary webpage and the secondary webpage are in a same
interface” as recited in claim 1, and “not when received messages are
rendered.” (Req. Reh’g 2.) (emphasis in original)
We have carefully reviewed the Decision in light of Appellants’ first
allegation of error. However, we find without merit Appellants’ allegation
that we mischaracterized Appellants’ primary argument regarding the
Examiner’s rejection of claim 1. We note that, in the Decision, we set out to
resolve the issue of whether the combination of Kreiner and Forman teaches
or suggests updating, transmitting, and receiving a message to be rendered
on the display of a primary browser, as recited in claim 1. (Dec. 4.) We
answered that inquiry in the affirmative based on our finding that the
proffered combination teaches that, “upon detecting that a second webpage
has been updated with a message, using a code to transmit the message to a
remote location, which returns another code to indicate how the message
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should be rendered at the second webpage.” (Id. at 5.) While we
alternatively found that the distinction between a message to be rendered and
an already rendered message raised by Appellants in the Appeal Brief (App.
Br. 13) is not a patentable one, we did not rely on such a finding to affirm
the Examiner’s rejection. (Id.) Rather, we resolved the dispositive issue
noted above by finding that the combined disclosures of Kreiner and Forman
teach the disputed limitations of claim 1 thereby rendering the claim
unpatentable.
Second, Appellants allege that the Board erroneously refused to
consider Appellants’ arguments pertaining to a lack of sufficient motivation
to combine the teachings of the cited references. In particular, Appellants
argue that because these arguments were raised for the first time in the Reply
Brief in direct response to the Examiner changing the rationale to combine
the references in the Answer, they were proper and timely submitted. (Req.
Reh’g 4-5.)
We have carefully reviewed the Decision in light of Appellants’
second allegation of error. However, we find without merit Appellants’
allegation that we improperly declined to consider Appellants’ arguments
raised for the first time in the Reply Brief regarding the Examiner’s alleged
new motivation to combine the Kreiner and Forman references. In
particular, we note that the Examiner provided an initial rationale to
combine the references in the final office action, and Appellants opted not to
address the validity or the lack thereof in the Appeal Brief. Further, we note
that the Examiner repeats, verbatim, the same motivation to combine the
references in the corpus of rejection of the claim. (Ans. 5.) Additionally, we
note that while the Examiner has provided a more expansive version of the
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initial motivation in the Answer (Ans. 10), the essence of the motivation
remains the same. That is, according to the Examiner, the proffered
combination would enable users of the predictably resulting system to
transmit desired information to a remote location. Therefore, we do not
agree with Appellants that the Examiner changed the initial motivation in the
Answer to thereby open the door for Appellants to untimely raise such new
arguments for the first time in the Reply Brief. Appellants’ new arguments
in the Reply Brief are inappropriate and will not be considered. See 37
C.F.R. § 41.52(a)(1). Belated arguments are technically waived. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”).
Third, Appellants allege that the Board erred by declining to
separately discuss the merit of Appellants’ separate arguments regarding the
patentability of various dependent claims, but instead chose to adopt the
Examiner’s findings to summarily affirm the rejection of those claims. In
particular, Appellants argue that because they persuasively rebutted the
Examiner’s rejection of the dependent claims by showing that the Examiner
ignored certain specific limitations recited therein, the Examiner did not
establish by a preponderance of the evidence that the claims are unpatentable
over the proffered combination. (Req. Reh’g 5-6.) As an example,
Appellants submit that they previously argued in the Brief that the Examiner
overlooked the recitation of claim 2, whereby “a secondary webpage is a
hidden webpage embedded in the primary web page.” Consequently,
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Appellants allege to have shown that the Examiner failed to establish a
prima facie of obviousness for that claim. (Req. Reh’g 5.)
We have carefully reviewed the Decision in light of Appellants’ third
allegation of error. However, we find without merit Appellants’ allegation
that by not addressing each group of claims discussed by Appellants as a
separate group with a separate heading, we did not consider Appellants’
arguments. During our deliberation we thoroughly reviewed each of
Appellants’ arguments and weighed their merits against the findings
proffered by Examiner in the Answer. After careful consideration of each
group of claims argued in the Briefs, we found that the weight of the
evidence favors the Examiner’s rejection by a preponderance standard, and
thereby decided to adopt the Examiner’s findings. For instance, regarding
Appellants’ allegation that the Examiner ignored certain limitations of claim
2, the Examiner found that the combination of Kreiner and Forman renders
claim 2 unpatentable. (Ans. 5, 6, 13.) We agree with the Examiner. Kreiner
discloses a first webpage rendered from inputting the address thereof into the
interface of a guest browser, which is in turn rendered from the code of a
second webpage. ([0007].) Because both the first and second webpages are
rendered in the guest browser, which is in turn rendered based on the codes
of one of the webpages, we are satisfied that Kreiner teaches that one of the
webpages is embedded into the other. Consequently, we maintain our initial
position to affirm the Examiner’s rejection of claims 1-20 as set forth in the
Decision.
Appellants are reminded that merely placing an argument in a separate
location with a separate heading from another argument does not necessarily
make it a separate argument for patentability. It is the “substance” of such
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arguments that determines a separate argument for patentability. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir.
1991).

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

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