Ex Parte Chan et al

Patent Trial and Appeal Board

Sep 18, 2014

11945466 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PHILIP S.P. CHAN and KENNETH SABIR
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Appeal 2011-012981
Application 11/945,466
Technology Center 3600
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE

This is a decision on rehearing in Appeal No. 2011-012981. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b).
37 C.F.R. § 41.52.

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ISSUES ON REHEARING
Appellants raise three issues in the Request for Rehearing. The first
issue relates to whether it was proper for the panel not to reach an
anticipation rejection after finding that an obviousness rejection over the
same claims was proper. The second issue relates to whether it was proper
to give no patentable weight to limitations that had no functional effect. The
third issue is whether the perception of the data as being an inanimate object
has a functional effect.
ANALYSIS
We determined in our original Decision that the rejection of claims 1–
11 under 35 U.S.C. § 103(a) as unpatentable over Olson and Schreiber was
proper, and that the rejection of claims 7–11 under 35 U.S.C. § 102(b) as
anticipated by Ginter, therefore, did not need to be reached. Decision 9.
The Appellants first argue that the anticipation rejection is not
cumulative because it relies on art different from that in the obviousness
rejection, and that the MPEP does not have a provision allowing the Board
to not reach a rejection. Request 3–4.
These arguments are unpersuasive. The MPEP governs the Patent
Examining Corps, not the Patent Trial and Appeal Board. The Board will
frequently consult the MPEP to find how Examiners are instructed to
perform patentability determinations, but the Board is independent of the
Patent Examining Corps. The statutes governing the Board are 35 U.S.C.
§ 134(a) (“An applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Patent
Trial and Appeal Board, having once paid the fee for such appeal”) and
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6(b)(1) (“. . . on written appeal of an applicant, review adverse decisions of
examiners upon applications for patents pursuant to section 134(a)”). An
Examiner’s decision in this context is to allow or reject a claim. Once a
claim is found properly rejected under one ground, no further Board review
of additional grounds will alter that finding, and the decision is final for
appellate review, unless designated otherwise.
We recognize, however, the Appellants’ point that the anticipation
rejection is unusual in that the Examiner made no findings as to the
substantive limitations in the claim body.
Because of this, we will not sustain the anticipation rejection because
it lacks a prima facie case. This decision is pro forma based on the absence
of Examiner findings in support of the rejection, and our decision makes no
findings and renders no opinion as to whether Ginter actually does or does
not anticipate the claims, or as to whether patentable weight should or
should not be afforded the substantive claim body limitations.
As to the second issue, we find the Appellants’ referral entirely to In
re Gulack, 703 F.2d 1381 (Fed.Cir.1983) to be unhelpful to their argument,
as King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010) is
more pertinent and its pertinence was made of record. Decision 8–9.
Additionally, in response to Appellants’ argument that this is not a printed
matter case, we note that the King court held that “[a]lthough these ‘printed
matter’ cases involved the addition of printed matter, such as written
instructions, to a known product, we see no principled reason for limiting
their reasoning to that specific factual context.” Id. at 1279. Here, the panel
found that the claims merely labelled data to inform one as to the type of
data the claim aspired to use (inanimate data) without any functional
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mechanism for achieving that aspiration. Further, we clarify for the record
that the panel did not disregard any limitation. A decision to afford little or
no patentable weight requires explicit consideration of the affected limitation
to perform the analysis as to whether patentable weight is deserved, and such
consideration was provided. Decision 8-9.
Appellants also refer to the possibility that the Board made a new
ground of rejection, but were short of actually asking for designating this as
a new ground. In any event, the panel found that the Examiner’s finding
was sufficient for properly rejecting the claim, but also found that the
Examiner went further than necessary because the Examiner did not need to
give patentable weight to the mental interpretation of data, i.e. the data label.
Thus, the panel did not change the Examiner’s rejection basic thrust, and the
ground was the same as the Examiner’s.
Finally, as to Appellants’ argument that there is a functional
connection between the private data and the inanimate object, the claim
recites selecting an inanimate object containing private data in the bounded
view of the virtual world and determining access rights for viewing the
private data for the participant and displaying the private data for view by
the participant in connection with a display of the inanimate object in the
bounded view only if permitted by the access rights and otherwise obscuring
the private data from view by the participant in connection with a display of
the inanimate object in the bounded view.
As we found, the Examiner found Schreiber, in column 7, lines 1-65,
explicitly teaches the feature of “obscuring the private data from view by the
participant if not permitted by access rights.” Decision 7. Schreiber actually
alters an image that one attempts to print so as to make parts not visible or
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obscured if access rights are insufficient. Thus, Schreiber shows it was
known to obscure parts of image data when insufficient access rights were
available.
Therefore, the combination of Olsen and Schreiber describes selecting
an object containing private data, determining access rights, and displaying
the private data only if permitted by the access rights. The functional
connection Appellants argue as being in the claim is also present in the
combination of Olsen and Schreiber. It is labelling the object as inanimate
that is undeserving of patentable weight. That label has no functional effect
on the claim.
CONCLUSION
Nothing in Appellants’ request has convinced us that we have
overlooked or misapprehended the facts or law as argued by Appellant. We
agree, however, that it is appropriate not to sustain the anticipation rejection
because of a lack of a prima facie case. Accordingly, we partially grant the
request.
DECISION
To summarize, our decision is as follows:
1. We have considered the REQUEST FOR REHEARING.
2. We GRANT the request not to sustain the anticipation rejection of
claims 7–11.
3. We DENY the request that we reverse the Examiner as to obvious
rejection of claims 1–11.
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REHEARING PARTIALLY GRANTED

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