Ex Parte CarroDownload PDFPatent Trial and Appeal BoardApr 3, 201310993231 (P.T.A.B. Apr. 3, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte FERNANDO INCERTIS CARRO ________________ Appeal 2010-011398 Application 10/993,231 Technology Center 3700 ________________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-011398 Application 10/993,231 2 STATEMENT OF THE CASE1 Fernando Incertis Carro (Appellant) filed a Request for Rehearing of the Decision affirming the rejection of claims 1, 3-6, 8, 9, and 11-15 under 35 U.S.C. § 103(a) as being unpatentable over Mortimer and Lamming, alone, or in further combination with Moskowitz or Vivian. PRINCIPLES OF LAW Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1),and “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Moreover, requests must specifically recite the points of law or fact which Appellant feels were overlooked or misapprehended by the Board. Arguments raised by Appellant for the first time in a Request for Reconsideration are waived if the arguments were required to have been made in the Briefs, unless good cause is shown. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008). DISCUSSION Appellant asserts that in arriving at its Decision the Board did not determine the scope and contents of the prior art or the differences between the claims at issue and the prior art. Appellant argues that the Examiner’s findings relied upon by the Board “omits the context and obfuscates the teachings” of Lamming and Mortimer. Request 2-3. 1 Our decision will make reference to the Appellant’s Request for Rehearing (“Request,” filed Mar. 25, 2013) and Appeal Brief (“App. Br.,” filed Jun. 19, 2007), the Examiner’s Answer (“Ans.,” mailed Sep. 4, 2007), and the PTAB Decision (“Decision,” mailed Jan. 29, 2013). Appeal 2010-011398 Application 10/993,231 3 Appellant claims a method for supplying information to an audience member. Appellant argues that neither Lamming nor Mortimer “teaches an audience member requesting additional information during the presentation of an informational screen, and then recording that request.” Request 3, quoting Appeal Br. 7. In particular, Appellant again contends that “Lamming does not teach a request for additional information beyond what is being recorded” (Request 2), and that Mortimer “does not teach time correlation of a request for additional information with the informational screen of the presentation” (Request 4). Each of these issues was addressed in the Decision. Mortimer, not Lamming, discloses requesting additional information during the presentation of an information screen. Similarly, Lamming, not Mortimer, discloses time correlation with regards to what is being requested. See Decision 4. Appellant’s contention that the combination of Lamming and Mortimer is improper because neither teaches or suggests the claimed invention remains unpersuasive. There is no rigid requirement of demonstrating a teaching, suggestion, or motivation to combine references in order to show obviousness. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). Contrary to Appellant’s assertion, the claimed features at issue are familiar elements based on the disclosures of Mortimer and Lamming and their combination according to known methods yields predictable results. We therefore properly concluded that under a preponderance of evidence standard Appellant failed to overcome the Examiner’s rejection of claims 1, 3-6, 8, 9, and 11-15 as unpatentable over Mortimer and Lamming, alone, or in further combination with Moskowitz or Vivian. Appeal 2010-011398 Application 10/993,231 4 Accordingly, we find Appellant’s Request fails to state with particularity the points the Board misapprehended or overlooked with respect to claims 1, 3-6, 8, 9, and 11-15 and fails to explain, to the extent the Request includes any argument regarding claims 1, 3-6, 8, 9, and 11-15, why the argument is now being made, but could not have been made earlier (i.e., good cause for omission). Therefore, we decline to modify our original Decision. DECISION While we have granted Appellant's request for rehearing to the extent that we have reconsidered our previous decision, the request is denied with respect to making any modification 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 Klh Copy with citationCopy as parenthetical citation