11463131 (P.T.A.B. Dec. 5, 2014)

Ex Parte Atkin

Patent Trial and Appeal BoardDec 5, 2014

11463131 (P.T.A.B. Dec. 5, 2014)

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. 11/463,131 08/08/2006 Steven Edward Atkin AUS920010277US2 6438 45993 7590 12/08/2014 IBM CORPORATION (RHF) C/O ROBERT H. FRANTZ P. O. BOX 23324 OKLAHOMA CITY, OK 73123 EXAMINER HUYNH, THU V ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 12/08/2014 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 STEVEN EDWARD ATKIN ____________________ Appeal 2011-012839 Application 11/463,131 Technology Center 2100 ____________________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and DANIEL N. FISHMAN, Administrative Patent Judges.1 HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed October 14, 2014, Appellant requests a rehearing under 37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent Trial and Appeal Board (Board), dated August 14, 2014. In the Decision, we affirmed the Examiner’s rejection of claims 1–30. Dec. 7. 1 Due to Judge Ruggiero’s retirement, the Ruggiero/Homere/Fishman panel has been replaced herein with Homere/Fishman/Whitehead. Appeal 2011-012839 Application 11/463,131 2 ANALYSIS In the Request for Rehearing (“Request”), Appellant alleges the Board erred by misapprehending Appellant’s argument that the claimed invention is unobvious over Davis because it has discovered, and solved a problem unrecognized by Davis. Req. Reh’g 1–2. Consequently, Appellant argues the Board holding-in-part: The contention that an applied prior art reference does not solve problems allegedly discovered by Appellant is not relevant to a rejection based on anticipation . . . is not consistent with the Manual of Patent Examination Procedure (MPEP) including the controlling case law2 regarding the unobviousness of claimed solutions to problems discovered by the inventor, and which were not recognized by the prior art. Id. at 2. According to Appellant, the present situation is substantially similar to that of the Omeprazole case,3 in that Davis is an “‘open standard’” published for public review and adoption of a method to render bidirectional text, whereas Appellant’s invention discovered and solved the problem with the standard bidirectional text rendering. Id. at 3. Appellant therefore submits the foregoing arguments are supported by various affidavits, which constitute evidence of nonobviousness, as opposed to mere contentions and allegations. Consequently, Appellant submits our affirmance was in error. Id. at 4–6. We have carefully reviewed the Decision in light of Appellant’s allegations of error. However, we find without merit Appellant’s allegations that the referenced holding is not consistent with the MPEP including the controlling case law. In particular, we find fundamental error in 2 In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008). 3 Id. Appeal 2011-012839 Application 11/463,131 3 Appellant’s non-obviousness arguments against a holding made regarding an anticipation rejection. The partial holding made in the decision, and referenced by Appellant in the request for rehearing clearly indicates that the issue of whether a prior art reference does not solve problems discovered by Appellant is not relevant to an anticipation rejection. However, Appellant argues strenuously that evidence of discovery of an unrecognized problem coupled with further evidence of a solution thereto is sufficient to overcome an obviousness rejection. Although such an argument may have certain merits with regards to an obviousness rejection, we reiterate that such evidence of non-obviousness cannot be properly relied upon to rebut a rejection based on anticipation. Consequently, it was not error on our part to dismiss as irrelevant non-obviousness arguments, and supported evidence presented by Appellant to rebut a holding made within the context of anticipation. DECISION Accordingly, we have granted Appellant’s 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 cdc