Ex Parte Chan et alDownload PDFPatent Trials and Appeals BoardJun 19, 201411945466 - (R) (P.T.A.B. Jun. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte PHILIP S.P. CHAN and KENNETH SABIR ___________ Appeal 2011-012981 Application 11/945,466 Technology Center 3600 ___________ 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. Appeal 2011-012981 Application 11/945,466 2 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 Appeal 2011-012981 Application 11/945,466 3 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 Appeal 2011-012981 Application 11/945,466 4 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 Appeal 2011-012981 Application 11/945,466 5 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. Appeal 2011-012981 Application 11/945,466 6 REHEARING PARTIALLY GRANTED Klh Copy with citationCopy as parenthetical citation