Ex Parte Borriello et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613361033 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 13/361,033 01/30/2012 Diego Bordello 2010P10075 6878 27350 7590 12/29/2016 LERNER GREENBERG STEMER LLP Box SA P.O. BOX 2480 HOLLYWOOD, EL 33022-2480 EXAMINER MRABI, HASSAN ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): boxsa@patentusa.com docket @ paten tusa. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIEGO BORRIELLO and NADIA GIUSTI Appeal 2015-006951 Application 13/361,033 Technology Center 2100 Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE On Dec. 8, 2016, Appellants filed a Request for Rehearing (hereinafter “Request” or “Req. Reh’g”) under 37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent Trial and Appeal Board (Board), mailed Nov. 4, 2016.1 In the Decision, we affirmed the Examiner’s Final Rejection of claims 1, 2, 4, and 5. We deny the Request for Rehearing. 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. §41.52(a)(1). Appeal 2015-006951 Application 13/361,033 In their Request, Appellants assert the Board misapprehended the argument that the Examiner errs in combining Elbaum with Milic-Frayling because the “established function” of Milic-Frayling “is to enable the user of the web browser to quickly return to a desired resource without navigating to previously visited intervening resources,” in contrast to the established function of Elbaum, which is testing web applications. (Req. Reh’g. 2—3; see App. Br. 12—14.) However, we are not persuaded the Examiner errs in relying on the pertinent teachings in Elbaum regarding logging user interactions collected during a user session, notwithstanding Elbaum’s ultimate web application testing functions. (Final Act. 7.) “[T]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”) In summary, having fully considered the arguments in the Request, on this record, we are not persuaded that we have misapprehended or overlooked any points raised by Appellants. We find none of Appellants’ 2 Appeal 2015-006951 Application 13/361,033 arguments are persuasive that our Decision was in error. We have reconsidered our Decision, but decline to grant the relief requested. DECISION In view of the foregoing discussion, 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. REHEARING DENIED 3 Copy with citationCopy as parenthetical citation