Ex Parte Carro

Patent Trial and Appeal Board

Apr 3, 2013

10993231 (P.T.A.B. Apr. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FERNANDO INCERTIS CARRO
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Appeal 2010-011398
Application 10/993,231
Technology Center 3700
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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

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