Ex Parte Breed

Patent Trial and Appeal Board

Sep 25, 2014

11936950 (P.T.A.B. Sep. 25, 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.
11/936,950 11/08/2007 David S. Breed ATI-432 1772
22846 7590 09/25/2014
BRIAN ROFFE, ESQ
8170 McCormick Boulevard, Suite 223
Skokie, IL 60076-2914
EXAMINER
NGUYEN, BAO LONG T
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
09/25/2014 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 DAVID S. BREED
____________

Appeal 2012-004618
Application 11/936,950
Technology Center 3600
____________

Before JENNIFER D. BAHR, LYNNE H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
David S. Breed (Appellant) filed a request for rehearing (hereinafter
“Request”), dated August 27, 2014, asking that we reconsider our decision
mailed June 27, 2014 (hereinafter “Decision”). Such Requests for
Rehearing are limited to matters overlooked or misapprehended by a Panel
in rendering a decision. See 37 C.F.R. § 41.52. In the Decision, we affirmed
the Examiner’s rejections (1) of claims 1, 6, and 17 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement; (2) of claims 1−20 under 35 U.S.C. §103(a) as being
unpatentable over Paul and Obradovich; and (3) of claims 1–20 under the
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Application 11/936,950

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judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1, 6, 8, 13, 22 and 23 of Breed in view of Paul and
Obradovich.
OPINION
Appellant presents two points which he alleges this Panel has
misapprehended or overlooked. Request 1−2. We grant the Request to the
extent that we have considered the arguments relating to these points, but
otherwise deny the Request.
Regarding the rejection of claims 1, 6, and 17 under 35 U.S.C. § 112,
first paragraph, Appellant contends that we failed to specifically mention a
sentence in the Specification (page 37, lines 35−37) that was identified in
the Appeal Brief at page 10. Request 2. However, we did not misapprehend
or overlook this point by not mentioning the sentence referenced by
Appellant. We addressed the point at page 3, lines 6−23 of the Decision,
where we specifically referred to page 10 of the Appeal Brief. Furthermore,
at page 2 of the Decision we also quoted from, and referenced to, that
portion of the Specification in agreeing with the Examiner’s findings, as set
forth at pages 17−20 of the Examiner’s Answer. The Examiner found that
Appellant “is merely contending that the knowledge of one skilled in the art
makes the invention obvious.” Decision 3 (citing Ans. 17–20). Thus
Appellant has not pointed to any argument at page 2−3 of the Request that
we did not fully consider in our Decision.
Regarding the rejection of claims 1−20 under 35 U.S.C. §103(a) as
being unpatentable over Paul and Obradovich, Appellant contends, for the
first time, that “the Board misapprehends the manner in which gesture
control is performed in the claimed invention, which manner differentiates
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Application 11/936,950

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the claimed invention over the applied prior art.” Request 3 (emphasis
added). In particular, Appellant argues that the
combination of Paul and Obradovich would [] only generate a
voice [gesture] after an option regarding the manner of
component control has already been determined.
In the invention, the question ask[ed] by the computer
system is how the person wants to control the component, e.g.,
how do you want to adjust the temperature (looking for a
thumbs up to indicate an increase in temperature and a thumbs
down to indicate a reduction in temperature as disclosed).
Confirmation of an earlier control of a component is not the
sought [after] result of the detection of a gesture in the
invention, but rather it is the actual manner for component
control”
Id.
However, Appellant has not pointed out where the Appeal Brief or the
Reply Brief contain an argument disputing whether the combination of Paul
and Obradovich “would only [] generate a voice [gesture] after an option
regarding the manner of component control has already been determined”
Request 3.
Thus, the Board cannot have overlooked or misapprehended
arguments which were not originally before it. “Arguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R.
§ 41.52(a)(1)(2007); see also Ex parte Hindersinn, 177 USPQ 78, 80 (BPAI
1971) (An argument advanced in a petition for reconsideration but not
advanced in the principal brief or the reply brief was not properly before the
Board); cf. Pentax Corp. v. Robison, 135 F.3d 760, 762 (Fed. Cir. 1998)
(citing cases supporting the proposition that issues not raised before the
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Application 11/936,950

4
court are not addressed on rehearing). Appellant has not shown good cause
as to why this new argument is entitled to consideration under 37 C.F.R.
§ 41.52(a)(2)(2007).
For the above reasons, the arguments in Appellant’s Request do not
convince us that we overlooked or misapprehended any matter or that we
erred in affirming the Examiner’s rejection of claims 1, 6, and 17 under 35
U.S.C. § 112, first paragraph and the Examiner’s rejection of claims 1−20
under 35 U.S.C. § 103(a) as unpatentable over Paul and Obradovich.

DECISION

Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.

DENIED

rvb