Ex Parte Conklin

Patent Trial and Appeal Board

Nov 13, 2017

12144915 (P.T.A.B. Nov. 13, 2017)

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.
12/144,915 06/24/2008 Charles Clinton Conklin 20004/106US02 2425
81905 7590 11/15/2017
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
ADAMS, EILEEN M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
11/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j flight @ hfzlaw. com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES CLINTON CONKLIN
Appeal 2015-003876
Application 12/144,915
Technology Center 2400
Before JOHN A. JEFFERY, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the August 22, 2017, Decision on
Appeal (“Decision”), wherein we affirmed the rejections of claims 1—8,
10-21, and 23—37 under 35 U.S.C. § 103(a) as unpatentable over the prior
art.
We have reconsidered the Decision in light of Appellant’s arguments
but, for the reasons given below, we are not persuaded we misapprehended
or overlooked any points in our Decision.
ANALYSIS
Appellant contends our decision is incorrect because we overlooked
or misapprehended the argument that the combination of references relied
upon in the rejections of claims 1, 14, 26, and 31 under 35 U.S.C. § 103 does
Appeal 2015-003876
Application 12/144,915
not teach or suggest that identifying occurrences of live viewing of media,
recording of media, and playback of previously recorded media is based on
write commands and read commands. Req. Reh’g 2.
Regarding claim 1, Appellant asserts “Appellant’s position is that the
combined teachings of Ludtke, Fakharzadeh and Ismail fall short of
suggesting the claimed invention to those having ordinary skill in the art.”
Id. Throughout this appeal, however, Appellant has argued the prior art
references individually. See App. Br. 12 (arguing only Ismail); Reply Br. 6
(“neither of Fakharzadeh nor Ismail et al. teaches or suggests the
relationship element set forth in claim 1”). Indeed, Appellant continues to
argue the references separately in the Request for Rehearing:
Because each of these references fails to teach or suggest any
such causal relationship between detecting write and read
commands and identifying occurrences of live viewing of
media, recording of media and playback of previously recorded
media stored on a data storage device, the combined teachings
of the references cannot reasonably be considered to do so.
Req. Reh’g 3 (emphasis added).
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Nowhere in the Appeal Brief did
Appellant persuasively argue that the claimed subject matter would not have
been obvious to those of ordinary skill in the art in light of the combined
teachings of the cited references. See Keller, 642 F.2d at 425; Decision 4—6.
Rather, in the Appeal Brief, Appellant focused exclusively on the teachings
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Appeal 2015-003876
Application 12/144,915
of Ismail, even though the rejection was based on a combination of
references. See Final Act. 4—6.
Appellant contended for the first time in the Reply Brief that
one of ordinary skill in the art would not have arrived at the
claimed relationship between the write commands and read
commands and the identifying of occurrences of live viewing of
media, recording of media, and playback of previously recorded
media set forth in claim 1 based on Fakharzadeh and Ismail et
al.
See Reply Br. 6. That contention and supporting arguments were not made
in the Appeal Brief and were not made in response to a new issue brought up
by the Examiner in the Answer. Although Appellant in the Request for
Rehearing asserts that the new arguments were timely (Req. Reh’g 4—5), the
Examiner had no opportunity to respond to them. Giving cognizance to
Appellant’s belated arguments would have vitiated the force of the
requirement in 37 C.F.R. 41.41(b)(2) that
[a]ny argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the [EJxaminer’s answer, including any designated new ground
of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
Therefore, to the extent it is not clear from our Decision, we consider
Appellant’s arguments raised for the first time in the Reply Brief (Reply Br.
6—7) to be waived.
Appellant also contends in the Request for Rehearing that “the
Decision did not make the necessary factual inquiries to support a proper
obvious analysis” because
the Decision did not examine the subject matter allegedly
disclosed by Ludtke, Fakharzadeh, or Ismael for the purpose of
determining whether the claimed causal relationship that the
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Appeal 2015-003876
Application 12/144,915
identification of occurrences of live viewing of broadcast
media, recording of media and playback of previously recorded
stored media is based on the detection of write commands and
read commands, was taught or suggested thereby.
Req. Reh’g 5 (citing Graham v. John Deere Co., 383 U.S. 1 (1966)).
In reaching our Decision, we considered all evidence presented and all
timely arguments made by Appellant. See 37 C.F.R. § 41.37(c)(l)(iv); see
also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“Filing a Board appeal does not, unto itself, entitle an appellant to de novo
review of all aspects of a rejection. If an appellant fails to present arguments
on a particular issue ... the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”). We also considered the
findings of fact and conclusions made by the Examiner and, if not made
clear in our Decision, we adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We found a preponderance of the evidence supported the
Examiner’s findings that the cited prior art teaches or suggests the disputed
limitations of claim 1, and agreed with the Examiner’s ultimate conclusion
of obviousness with regard to claim 1 and the remaining claims.
DECISION
Based on the foregoing, we have granted Appellant’s request to the
extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any changes therein.
REHEARING DENIED
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