13529096 (P.T.A.B. Jun. 20, 2017)

Ex Parte Apps et al

Patent Trial and Appeal BoardJun 20, 2017

13529096 (P.T.A.B. Jun. 20, 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. 13/529,096 06/21/2012 William P. Apps 11462 PUS; 67080-539 PUS1 9534 26096 7590 06/22/2017 TART SON OASKFY fr OT DS P C EXAMINER 400 WEST MAPLE ROAD SUITE 350 WILKENS, JANET MARIE BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 06/22/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM P. APPS, RYAN C. MEERS, and KYLE L. BALTZ Appeal 2015-001977 Application 13/529,096 Technology Center 3600 Before: BRETT C. MARTIN, JILL D. HILL, and BRENT M. DOUGAL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE William P. Apps et al. (Appellants) filed a request for rehearing on June 14, 2017 (hereinafter “Request”), in response to our Decision on Appeal mailed April 14, 2017 (hereinafter “Decision”), affirming the Examiner’s rejection of the claims under 35 U.S.C. § 251. Appeal 2015-001977 Application 13/529,096 ISSUE RAISED ON REQUEST FOR REHEARING Did the Patent Trial and Appeal Board (“Board”) misapprehend or overlook the requirements for an obviousness rejection by failing to set forth an explicit motivation or reason why one skilled in the art would combine the cited references in the manner claimed? ANALYSIS 37 C.F.R. § 41.52 (2012) states in relevant parts: (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. . . . The request for rehearing must state with particularity the point believed to have been misapprehended or overlooked by the Board. Arguments not raised [in the brief before the Board], and [ejvidence not previously relied upon [in the brief and the reply brief(s)] are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. . . . (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.50(b) are permitted. (Emphasis added). Appellants cite precedent from KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (an obvious determination must consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”), In re NuVasive, 842 F.3d, 1376, 1381 (Fed. Cir. 2016) (“The PTAB must make a finding of motivation to combine when 2 Appeal 2015-001977 Application 13/529,096 it is disputed.”), and Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. Feb. 14, 2017) (“the Board [must] find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed by the ... patent claims at issue and had a reasonable expectation of success in doing so.”), arguing that the Board’s affirmance is contrary to such precedent. Because these arguments were not raised previously, and Appellants have not provided good cause for raising the arguments belatedly, they cannot support Appellants’ argument that the Board’s Decision misapprehended or overlooked points raised in the appeal. A Request for Rehearing is not a venue for additional arguments that merely dispute a Decision by the Board — Appellants must establish that the Board misapprehended or overlooked a point made in the appeal. We conclude that Appellants have not shown any points which we misapprehended or overlooked in our Decision. DECISION Appellants’ Request for Rehearing is granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants’ Request. Appellants’ Request is denied to the extent that we do not modify the outcome of 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)(l)(iv). DENIED 3