Ex Parte Conrad et al

Patent Trial and Appeal Board

Aug 23, 2018

10318431 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/318,431 12/13/2002 Linda D. Conrad
63656 7590 08/27/2018
DISNEY ENTERPRISES, INC.
C/0 KILPATRICK TOWNSEND & STOCKTON, LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
090492-POlOlOUSl-0724151 9136
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINDA D. CONRAD,
MICHAEL A. COLGLAZIER, and RENEE THIBODEAUX
Appeal2016-006600
Application 10/318,431 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU A. MOHANTY and
JAMES A. TARTAL, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Linda D. Conrad, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a)oftheExaminer'sFinalRejectionofclaims 1-10, 15, 17, 18,20,
39, 41--43, 45--47, 53-63, 65-70, and 72-78. We have jurisdiction under
35 U.S.C. § 6(b).
1 The Appellants identify New York Life Insurance Company of New York
as the real party in interest. App. Br. 2.
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Application 10/318,431
SUMMARY OF DECISION
We AFFIRM but denominate the affirmed rejection as a NEW
GROUND OF REJECTION.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for an image processing system for acquiring a
plurality of images of a user at a plurality of locations and
directing production of products including images, the method
compnsmg:
providing to the user an identification medium comprising
an identifier assigned to the identification medium;
providing a plurality of image capture devices at a
plurality of locations;
capturing the plurality of images of the user with the
plurality of image capture devices, wherein capturing each of the
plurality of images includes receiving, by the image capture
device, from the identification medium, the identifier assigned to
the identification medium;
transmitting the plurality of images and the identifier from
the plurality of image capture devices at the plurality of locations
over a communications network to a storage server;
associating a temporary account that is not dedicated to the
user and is established without action by the user, the identifier,
and the plurality of images in the storage server in response to
the identifier;
storing the plurality of images and the identifier in the
storage server;
subsequently
determining an account for the user in an account engine,
wherein the account for the user is created by the user, contains
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personal information about the user, and is associated with the
identifier;
associating the images from the temporary account that are
associated with the identifier with the account for the user;
subsequently
receiving input of the account for the user by the user from
a user access device;
determining the plurality of images in response to the input
of the account for the user in the storage server;
permitting the user to view the plurality of images on the
user access device;
subsequently
receiving an order for a product including an image from
the plurality of images selected by the user on the user access
device; and
directing production of the product including the image in
response to the order.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bustos
Jones
Everling
Kaku
Jean
Manico
Blagg
Weixel
us 5,816,443
US 6,224,387 Bl
US 2001/0016833 Al
US 2002/0001468 Al
US 6,537,078 B2
US 6,373,551 B2
US 7,076,465 Bl
US 7,376,584 Bl
3
Oct. 6, 1998
May 1, 2001
Aug. 23, 2001
Jan.3,2002
Mar. 25, 2003
Apr. 16, 2002
July 11, 2006
May 20, 2008
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Application 10/318,431
The following rejections are before us for review:
1. Claims 1-10, 15, 17, 18, 20, 39, 41--43, 45--47, 53-63, 65-70, and 72-
78 are rejected under 35 U.S.C. § 101 as being directed to judicially-
excepted subject matter.
2. Claims 1, 2, 4--7, 9, 10, 43, 45, 46, 53-56, 59---63, 67, 70, 72, and 73
are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Kaku and Weixel.
3. Claims 3, 47, and 57 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel and Manico.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kaku, Weixel and Jones.
5. Claims 15, 20, 68, and 74--78 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaku, Weixel and Blagg.
6. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel Blagg, and Bustos.
7. Claims 39, 41, 42, and 69 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaku, Weixel and Everling.
8. Claims 58 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kaku, Weixel and Jean.
9. Claims 65 and 66 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel, Blagg, and Manico
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ISSUES
Did the Examiner err in rejecting claims 1-10, 15, 17, 18, 20, 39, 41-
43, 45--47, 53---63, 65-70, and 72-78 under 35 U.S.C. §101 as being directed
to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 1, 2, 4--7, 9, 10, 43, 45, 46,
53-56, 59---63, 67, 70, 72, and 73 under 35 U.S.C. § 103(a) as being
unpatentable over Kaku and Weixel?
Did the Examiner err in rejecting claims 3, 47, and 57 under 35 U.S.C.
§ 103(a) as being unpatentable over Kaku, Weixel, and Manico?
Did the Examiner err in rejecting claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Kaku, Weixel and Jones?
Did the Examiner err in rejecting claims 15, 20, 68, and 74--78 under
35 U.S.C. § 103(a) as being unpatentable over Kaku, Weixel, and Blagg?
Did the Examiner err in rejecting claims 17 and 18 under 35 U.S.C. §
103(a) as being unpatentable over Kaku, Weixel Blagg, and Bustos?
Did the Examiner err in rejecting claims 39, 41, 42, and 69 under 35
U.S.C. § 103(a) as being unpatentable over Kaku, Weixel, and Everling?
Did the Examiner err in rejecting claims 58 under 35 U.S.C. § 103(a)
as being unpatentable over Kaku, Weixel, and Jean?
Did the Examiner err in rejecting claims 65 and 66 under 35 U.S.C. §
103(a) as being unpatentable over Kaku, Weixel, Blagg, and Manico?
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ANALYSIS
The rejection of claims 1-10, 15, 17, 18, 20, 39, 41-43, 45-47, 53-63, 65-
70, and 72-78 under 35 US.C. §101 as being directed to judicially-excepted
subject matter.
The Appellants argued these claims as a group. See Br. 9-10. We
select claim 1 as the representative claim for this group, and the remaining
claims 2-10, 15, 17, 18, 20, 39, 41--43, 45--47, 53---63, 65-70, and 72-78
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that
the claims are directed towards marketing or selling captured
images to customers using accounts, which is considered to be
an abstract idea inasmuch as providing identifiers and image
capture devices, capturing images, transmitting images,
associating accounts, storing images, and allowing the user to
select and order are activities that are considered both
fundamental economic or business practices, an idea of itself,
and a mathematical relationship or formula (by providing an
algorithm (formula) in the form of a flowchart that dictates the
step by step process steps to perform the claimed invention).
Final Rej. 7- 8.
According to the Appellants, "[ t ]he Examiner asserts that the claims
are directed toward the abstract idea of 'marketing or selling captured
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images to customers using accounts.' (Office Action at p. 8) .... [T]his is
inaccurate." Br. 9. We agree. The claims are not "directed towards
marketing or selling captured images to customers using accounts." Final
Rej. 7. The Examiner's characterization of what claim 1 is directed to is
inaccurate.
Before determining whether claims at issue are directed to an abstract
idea, we must first determine what the claims are directed to.
The "directed to" inquiry [ ] cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") Rather, the "directed to" inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether "their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 2016 WL 1393573, at *5
(Fed. Cir. 2016) (inquiring into "the focus of the claimed advance
over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue [ ] can readily be
understood as simply adding conventional computer components to well-
known business practices" or not. Id. at 1338; see also Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
In Enfzsh, for example, the court noted that "[ s ]oft ware can make
non-abstract improvements to computer technology just as hardware
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improvements can[.]" Id. The court put the question as being "whether the
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Enfzsh at 1335-36. In
Enfish, the court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
In this case, claim 1 as a whole is focused not on any improvement to
computer functionality but on using generic devices in their ordinary
capacity for capturing images from multiple sources, classifying them via a
user-associated identification and delivering them to the correct user. Cf In
re TL! Communications LLC Patent Litigation, 823 F.3d 607, 1613 (Fed.
Cir. 2016)( the claims' focus "was not on an improved telephone unit or an
improved server.")
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
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of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016), quoted in Apple, Inc. v. Ameranth, Inc., 7842 F.3d 1229, 1241
(Fed. Cir. 2016).
In that regard, the Background section of the Specification includes
this discussion of the problem:
The method in place ensuring that guests receive the correct
photograph at the end of the day was quite unsophisticated.
Usually the system involved the roving photographer carrying
numbered paper tickets, which were given to the guest every time
a photograph was taken. The guest would then use the numbered
ticket to claim their photograph at the end of the day, which was
labeled with the corresponding number. Unfortunately, it was all
too common for guests to lose their small paper tickets and not
be able to claim their photograph. Also, since photos were taken
with traditional film, it took a while for the photos to be
developed. The process involved in picking up photographs was
not very sophisticated, and long lines would form towards the
end of the day. These long waits discouraged guests from
purchasing photographs. There was also no place to purchase
these photographs other than a few select locations within the
park.
Spec., para. 8. According to the Specification, the inventors solved the
problem by "creat[ing] a more pleasant and rewarding guest experience by
providing a centralized system for capturing many different types of images
from multiple sources throughout a venue such as a theme park." Spec.,
para. 9. "The present invention utilizes an ingenious method of attaching
identity to photographs taken. The present invention then stores the
photographs centrally and provides unique and convenient methods for
guests to view their photos." Spec. para. 9. See also para. 11:
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The present invention involves assigning identification to
a guest attending a venue such as a theme park or vacation spot
through ID means or media, and providing convenient methods
by which the identification means is used at various sources of
photo capture throughout the park to mark the identity of each
photo taken. Each source of photo capture is then capable of
communicating the photos taken to a central location, where all
photos are sorted according the identification means used to
mark each photo at the source of photo capture. Photos are then
digitally delivered to the proper guest account for viewing.
In light of Specification's description of the problem and the
inventor's solution, the advance over the prior art can be described as being
a centralized system for capturing images from multiple sources, and sorting
and delivering the images by identity. This then is the heart of the invention.
Cf Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315,
1328 (Fed. Cir. 2017)("the heart of the claimed invention lies in creating and
using an index to search for and retrieve data ... an abstract concept.")
As we indicated earlier, the focus of claim 1 as a whole is on using
generic devices in their ordinary capacity for capturing images from multiple
sources, classifying images via a user-associated identification and
delivering the images to the correct user. Coupling this with the heart of the
invention being a centralized system for capturing images from multiple
sources, and sorting and delivering the images by identity, the claims are
reasonably characterized as being "directed to" the concept of capturing
images from multiple sources into a centralized server, classifying images
via a user-associated identification and delivering the images to the correct
user.
We now tum to the question of whether the concept of capturing
images from multiple sources into a centralized server, classifying images
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via a user-associated identification and delivering the images to the correct
user to which the claims are "directed to" is a patent-ineligible abstract idea.
"[T]he decisional mechanism courts now apply [to help answer that
question] is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Limited v. Openet Telecom, Inc., 841
F.3d 1288, 1294 (Fed. Cir. 2016).
In that regard, we find little difference between said concept (i.e.,
capturing images from multiple sources into a centralized server, classifying
images via a user-associated identification and delivering the images to the
correct user) and the combination of (a) "the abstract idea of classifying and
storing digital images in an organized manner," In re TL! Commc'ns, 823
F.3d at 611, and (b) the abstract idea of"collecting information, analyzing it,
and displaying certain results of the collection and analysis," Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir. 2016). Since
merely combining abstract ideas does not render their combination any less
abstract, it is reasonable to make the determination that the concept (i.e.,
capturing images from multiple sources into a centralized server, classifying
images via a user-associated identification and delivering the images to the
correct user) to which claim 1 is directed to is a patent-ineligible concept.
Cf Shortridge v. Found. Constr. Payroll Serv., LLC, 2015 WL 1739256
(N.D.Cal., 2015), affd, 655 Fed.Appx. 848 (Fed. Cir. 2016).
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
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concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined that
[ t ]he elements in the instant claims ( image capture devices,
identification medium, server, communication means, and
database), when taken in combination, together do not offer
"significantly more" than the abstract idea itself because the
claims do not recite an improvement to another technology or
technical field, an improvement to the functioning of the
computer itself, or provide meaningful limitations beyond
generally linking an abstract idea to a particular technological
environment. It should be noted the limitations of the current
claims are performed by a generically recited processor and the
memory and program components contain no more than mere
instructions to implement the abstract idea on a computer. The
claims require no more than a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. As such
the claims simply describe a problem, announce purely
functional steps that purport to solve the problem, and recite
standard computer operations to perform some of those steps,
which is not "significantly more" than an abstract idea.
Final Rej. 8.
We agree with the Examiner that claim 1 does not include an element
or combination of elements that is sufficient to ensure that the claim in
practice amounts to significantly more than to be upon the abstract idea of
capturing images from multiple sources into a centralized server, classifying
images via a user-associated identification and delivering the images to the
correct user itself. We do not see in claim 1 an element or combination of
elements adds anything significantly more. And the Appellants do not
explain in what way they do.
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In fact, the Specification evidences that the devices used to practice
the abstract idea are generic. See e.g., Spec., paras. 25 ("Images are collected
and managed by a centralized system 150 ["Web Site"] as depicted in
FIG. 1.") The Specification supports the view that claim 1 covers using
generic devices as a conduit for practicing the abstract idea of capturing
images from multiple sources into a centralized server, classifying images
via a user-associated identification and delivering the images to the correct
user itself. Cf In re TL! Communications LLC Patent Litigation, 823 F .3d
607, 612 (Fed. Cir. 2016):
Put differently, the telephone unit itself is merely a conduit for
the abstract idea of classifying an image and storing the image
based on its classification. Indeed, the specification notes that it
"is known" that "cellular telephones may be utilized for image
transmission," [], and existing telephone systems could transmit
pictures, audio, and motion pictures and also had "graphical
annotation capability," [].
Accordingly, the Appellants do not persuade us that claim 1 includes
an element or combination of elements sufficient to ensure that the claim in
practice amounts to significantly more than to be upon the ineligible concept
(i.e., capturing images from multiple sources into a centralized server,
classifying images via a user-associated identification and delivering the
images to the correct user itself).
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, for the foregoing reasons, we
sustain the Examiner's determination that independent claim 1, and claims
2-10, 15, 17, 18, 20, 39, 41--43, 45--47, 53-63, 65-70, and 72-78 that stand
or fall with claim 1, are directed to ineligible subject matter under 35 U.S.C.
§ 101. Cf LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed.
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Cir. 2016) ("We have considered all of Lending Tree's remaining arguments
and have found them unpersuasive. Accordingly, because the asserted
claims of the patents in suit are directed to an abstract idea and do not
present an 'inventive concept,' we hold that they are directed to ineligible
subject matter under 35 U.S.C. § 101."). However, given our
characterization of what claim 1 is directed to differs from that of the
Examiner, our reasoning departs from that of the Examiner. Accordingly,
while we sustain the rejection, it is denominated as a new ground of
rejection.
The rejection of claims 1, 2, 4-7, 9, 10, 43, 45, 46, 53-56, 59-63, 67, 70, 72,
and 73 under 35 USC§ 103(a) as being unpatentable over Kaku and
Weixel.
We agree with the Appellants that "[ t ]he Examiner concedes that
Kaku does not teach or suggest the use of a temporary account for storing
images associated with identifiers that are not associated with a user account
and instead relies on Weixel," and that "[t]he Examiner's reliance on Weixel
is misplaced." App. Br. 12.
The Examiner takes the position that Kaku discloses all that is
claimed but for the temporary accounts as claimed, for which W eixel is
relied upon. Final Rej. 9-13. There appears to be no dispute that W eixel
discloses a temporary account, per se. See Weixel, 9:29 ("temporary
account").
The weakness in the Examiner's position is that it does not explain
how modifying Kaku to include Weixel"s temporary account would lead one
to what is claimed. Claim 1 calls for "associating a temporary account that
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is not dedicated to the user and is established without action by the user, the
identifier, and the plurality of images in the storage server in response to the
identifier." Claim 1. Kaku does not appear to disclose or suggest any
account at all. Accordingly, it is not clear how one of ordinary skill in the
art given nothing more than Weixel's disclosure of a "temporary account"
per se would be led to include such an account in Kaku, let alone so as to
reach the subject matter as it is claimed.
The Examiner does contend that when "the [Kaku] server associate[ s]
or links space in the server to store and set up sets of images for users, this
acts as a temporary account or storage spaced linked on the ID which is
captured." Final, page 11 (emphasis added). But this contention, which is
based on construing the claim phrase "temporary account" as a type of
storage, is inconsistent with the intrinsic evidence, i.e., the Specification.
See Spec., para. 39:
"An account need not be created before images can be stored, but
must be created before a guest can interact with them via the web
site, or other image access. The ID and account name are
preferably different. This allows images from guests who have
not yet been associated to be sent to a temporary account in the
t " sys em ....
See also claim 1 which distinguishes between "the temporary account ... and
the plurality of images in the storage server." Accordingly, a "temporary
account," as that claim phrase is reasonably broadly construed in light of the
Specification, does not equate to storage as the Examiner appears to contend.
Consequently, the Examiner's contention that Kaku includes a "temporary
account" is not supported by a preponderance of the evidence.
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Because a prima facie case of obviousness has not been made out in
the first instance, the rejection is not sustained.
The rejection of claims 3, 47, and 57 under 35 US.C. § 103(a) as being
unpatentable over Kaku, Weixel, and Manico.
The rejection of claim 8 under 35 US.C. § 103(a) as being unpatentable
over Kaku, Weixel and Jones.
The rejection of claims 15, 20, 68, and 74-78 under 35 US.C. § 103(a) as
being unpatentable over Kaku, Weixel, and Blagg.
The rejection of claims 17 and 18 under 35 US.C. § 103(a) as being
unpatentable over Kaku, Weixel Blagg, and Bustos.
The rejection of claims 39, 41, 42, and 69 under 35 US.C. § 103(a) as being
unpatentable over Kaku, Weixel and Everling.
The rejection of claims 58 under 35 US.C. § 103(a) as being unpatentable
over Kaku, Weixel, and Jean.
The rejection of claims 65 and 66 under 35 US.C. § 103(a) as being
unpatentable over Kaku, Weixel, Blagg, and Manico.
These rejections of dependent claims are not sustained for the reasons
given above in not sustaining the rejection of the respective independent
claims from which they depend.
CONCLUSIONS
The rejection of claims 1-10, 15, 17, 18, 20, 39, 41--43, 45--47, 53-63,
65-70, and 72-78 under 35 U.S.C. § 101 as being directed to judicially-
excepted subject matter is affirmed but denominated as a new ground.
The rejection of claims 1, 2, 4--7, 9, 10, 43, 45, 46, 53-56, 59---63, 67,
70, 72, and 73 under 35 U.S.C. § 103(a) as being unpatentable over Kaku,
and W eixel is reversed.
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The rejection of claims 3, 47, and 57 under 35 U.S.C. § 103(a) as
being unpatentable over Kaku, Weixel, and Manico is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel, and Jones is reversed.
The rejection of claims 15, 20, 68, and 74--78 under 35 U.S.C. §
103(a) as being unpatentable over Kaku, Weixel and Blagg is
The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel Blagg, and Bustos is reversed.
The rejection of claims 39, 41, 42, and 69 under 35 U.S.C. § 103(a) as
being unpatentable over Kaku, Weixel and Everling is reversed.
The rejection of claims 58 under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel, and Jean is reversed.
The rejection of claims 65 and 66 under 35 U.S.C. § 103(a) as being
unpatentable over Kaku, Weixel, Blagg, and Manico is reversed.
DECISION
The decision of the Examiner to reject claims 1-10, 15, 17, 18, 20, 39,
41--43, 45--47, 53---63, 65-70, and 72-78 is affirmed but the affirmed
rejection under § 101 is denominated as a new ground of rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
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Appeal2016-006600
Application 10/318,431
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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