Ex Parte Bravery et alDownload PDFPatent Trial and Appeal BoardJun 28, 201310555433 (P.T.A.B. Jun. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ANDREW JAMES FREDERICK BRAVERY, ALAN WILLIAM KNOX, and SIMON LAWS ________________ Appeal 2010-010791 Application 10/555,433 Technology Center 2400 ________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) on June 20, 2013, for reconsideration of our Decision On Appeal mailed April 29, 2013 (hereinafter “Decision”). Appeal 2010-010791 Application 10/555,433 2 ANALYSIS In a Request for Rehearing filed June 20, 2013, Appellants contend that: As will be further shown in detail below, the Board erroneously affirmed the Examiner’s withdrawn rejection of Claims 2, 10 and 12 under 35 USC § 101. Since the Board reversed the Examiner’s rejection of Claims 2, 10 and 12 under 35 USC § 103, the Board erred in affirming the Examiner’s overall decision on page 12 of the Board Decision since the previous rejection of Claims 2, 10 and 12 under 35 USC § 101 was not the subject of the present appeal for this case. (Req. Reh’g. 2.)1 We have carefully reviewed the Decision, in light of Appellants’ comments in the Request for Rehearing, and we find Appellants’ arguments persuasive for the reasons discussed infra. We concluded that, according to Appellants’ Brief, claims 1, 2, 5, 10, and 12 were pending. (Dec. 2; App. Br. 4.) As noted by Appellants and overlooked by the Board, the Examiner withdrew the rejection of claims 1, 2, 5-15, 18, 19, 21, and 23 under § 101 as being directed to nonstatutory subject matter in the Notice of Non-Compliant Appeal Brief mailed on November 25, 2009. Appellants, however, failed to present arguments regarding the § 101 rejection or even acknowledge the Examiner’s withdrawal of the § 101 1 We refer to Appellants’ Reply Brief (“Reply Br.”) filed May 18, 2010; Appeal Brief (“App. Br.”) filed Dec. 22, 2009; and Request for Rehearing (“Req. Reh’g.”) filed June 20, 2013. We also refer to our Decision on Appeal (“Dec.”) mailed Apr. 29, 2013. Appeal 2010-010791 Application 10/555,433 3 rejection, either in their Appeal Brief or Reply Brief. Most importantly, Appellants failed to address the reinstated (new) § 101 rejection in the Reply Brief. Specifically, the Examiner’s Answer rejected claims 1, 2, 5-15, 18, 19, 21, and 23 under § 101. (Ans. 3.) We summarily affirmed the Examiner’s § 101 rejection of claims 1, 2, 5, 10, and 12 (the only pending claims) due to Appellants’ lack of response. (Dec. 5.) Thus, even though the Examiner’s § 103 rejection of claims 1 and 5 were affirmed, and the § 103 rejection of claims 2, 10, and 12 were reversed, our overall Decision affirmed the Examiner because the § 101 rejection of claims 1, 2, 5, 10, and 12 was summarily affirmed. See 37 C.F.R. § 41.50(a)(1). (Dec. 12.) Appellants’ Reply Brief did not address the Examiner’s inclusion of the § 101 rejection in the Answer. However, since the Examiner withdrew the § 101 rejection in the Notice of Non-Compliant Appeal Brief, the inclusion of the § 101 in the Answer constituted a New Grounds of Rejection which requires a signature of the Director. 37 C.F.R. § 41.39(a)(2). Therefore, the § 101 rejection in the Answer was improper, because the Answer is not signed by a Director. (See Ans. 24-25.) Moreover, it is our view that the Examiner’s § 101 rejection would have been reversed on the merits had it been addressed by Appellants. We find that the pending claims recite adequate structure in the recited first and second peer systems and first storage device, and therefore, are not directed to software per se. Since the Examiner’s § 101 rejection was withdrawn and not the proper subject for appeal, we reconsider our Decision and conclude that the Appeal 2010-010791 Application 10/555,433 4 § 101 rejection should instead be reversed. Accordingly, since the § 103 rejection of pending claims 2, 10, and 12 was reversed (Dec. 12), the Decision should be revised to reflect the reversal of claims 2, 10, and 12. CONCLUSION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing with respect to claims 2, 10, and 12, the overall rejection of which will be reversed. Our affirmance of the Examiner’s § 103 rejection of claims 1 and 5 will not be changed. Arguments regarding any other claims and rejections have not been considered and are deemed to have been waived. Accordingly, we will modify our original overall Decision to affirm-in-part the Examiner’s rejection of claims 1, 2, 5-15, 18, 19, 21, and 23. The Examiner’s § 103 rejection of claims 1 and 5 remains affirmed, the Examiner’s § 103 rejection of claims 2, 10, and 12 remains reversed, and we reverse the Examiner’s § 101 rejection of claims 1, 2, 5, 10, and 12 (the only pending claims). REQUEST FOR REHEARING GRANTED llw Copy with citationCopy as parenthetical citation