Ex Parte Coutts

Patent Trial and Appeal Board

Jun 21, 2017

11836293 (P.T.A.B. Jun. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/836,293 08/09/2007 Daryl David Coutts MRG0001US 2964
23413 7590 06/23/2017
TANTOR TOT RTTRN T T P
EXAMINER
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NOTIFICATION DATE DELIVERY MODE
06/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARYL DAVID COUTTS
Appeal 2016-000629
Application 11/836,293
Technology Center 2100
Before CAROLYN D. THOMAS, KEVIN C. TROCK, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed, on March 27, 2017, a Request for Rehearing under 37
C.F.R. § 41.52(a)(1) (hereafter “Request”) of our Decision mailed January
27, 2017 (hereafter “Decision”). We have reviewed our Decision in light of
Appellant’s Request, but we decline to change the Decision.
Appeal 2016-000629
Application 11/836,293
STATEMENT OF THE CASE
In the Decision, we affirmed the rejection of claims 20—24 and 27—30
under 35 U.S.C. § 103(a) as unpatentable over the combination of Cheung et
al. (US 2004/0061716 Al; published Apr. 1, 2004) (“Cheung”), Awada et al.
(US 2007/0101289 Al; published May 3, 2007) (“Awada”), and Kang et al.
(US 2002/0152220 Al; published Oct. 17, 2002) (“Kang”).
ANALYSIS
Appellant argues the Board “incorrect[ly] appli[ed] the law in the rare
situation where it is substantiated that the primary reference inventor
(Cheung in this analysis) possesses all relevant knowledge.” Request 3.
Appellant argues “the Board should instead be applying In re Kleinman[.]”
Id. Appellant also cites to Ex parte Lower, Appeal No. 1997-2575 (BPAI).
Id.
The relevant portion of Kleinman fully states:
While it is true that the hypothetical person of ordinary
skill in the art against whose knowledge the question of
obviousness is weighed is legally presumed to know all the
relevant prior art, In re Boyer, 363 F.2d 455, 53 CCPA 1497
(1966), there is no presumption, rebuttable or not, that the
holder of a patent had constructive or actual knowledge of that
same art when he made the invention. Of course it might very
well be a significant point in weighing the content of a patent as
a reference if it can be demonstrated that an inventor had actual
knowledge of relevant art. However, that situation does not
confront us in this case.
In re Kleinman, 484 F.2d 1389, 1392 (CCPA 1973) (underlined emphasis
added). Kleinman did not hold that an inventor’s actual knowledge of a
reference is dispositive to an obviousness analysis. Rather, Appellant’s
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Appeal 2016-000629
Application 11/836,293
reliance on dicta in Kleinman is inapposite, as the issue presented here was
not before the court in Kleinman. Rather, Kleinman merely noted in dicta
that the inventor’s actual knowledge of the relevant art “might very well be a
significant point in weighing the content of a patent as a reference.” We do
not find that is the case here.
As noted in our Decision, the test for obviousness concerns the
knowledge of one of ordinary skill in the art. Decision 4; see 35 U.S.C.
§ 103(a) (a patent shall not issue if “the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains.”); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 406-7 (2007).
Here, the Examiner provided detailed findings regarding the
combination of Cheung, Awada, and Kang. Ans. 2^4; Final Act. 2—8.
Specifically, the Examiner modified Cheung’s user interface to display the
notifications and alerts by time order and with their associated time and date,
as taught in Kang. Final Act. 4—5; Ans. 3. As stated in our Decision, based
on the record before us, displaying messages or other information based
upon date or time ordering was simply a conventional technique. Decision
4. Accordingly, such a replacement would result in no more than the
predictable use of prior art: elements according to their established functions.
See KSR, 550 U.S. at 417 (In assessing the patentability versus obviousness
of claims defining a combination of prior art elements, the question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.”).
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Appeal 2016-000629
Application 11/836,293
Appellant also cites to Ex parte Lower. Request 3. First, the Lower
decision is a routine Board decision that, while binding authority in that
particular case, is not binding here. See Publication of Opinions as
Precedential, Informative, Representative, and Routine, PTAB Standard
Operating Procedure 2 (Rev. 9) (“SOP 2”) § VI, available at
https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-
9-22-2014.pdf. Second, in Lower, there is no indication that, as here, the
knowledge involved a conventional technique.
For the foregoing reasons, Appellant has not shown we
misapprehended or overlooked any issue of law or fact in our Decision.
DECISION
For the above reasons, Appellant’s Request has been granted to the
extent that we have reconsidered our Decision in light of the arguments in
Appellant’s Request, but it is denied with respect to our 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)(l)(iv).
REHEARING DENIED
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