Ex Parte Dingler et al

Patent Trial and Appeal Board

Sep 30, 2016

12953801 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/953,801 11/24/2010
46583 7590 10/04/2016
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
John R. DINGLER
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.
END920100175US1 4163
EXAMINER
HAMMOND III, THOMAS M
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
dbeltran@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. DINGLER, FRANK C. FISK, SRI RAMANATHAN,
MATTHEW A. TERRY, and MATTHEW B. TREV ATHAN
Appeal2013-010986 1
Application 12/953,801 2
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-5, 7-13, 24, and 26-30. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Jan. 2,
2013), Reply Brief ("Reply Br.," filed Sept. 11, 2013), the Examiner's
Answer ("Ans.," mailed July 12, 2013), and the Final Office Action ("Final
Act.," mailed Sept. 5, 2012).
2 Appellants identify the real party in interest as "International Business
Machines Corporation." App. Br. 2.
Appeal2013-010986
Application 12/953,801
STATEMENT OF THE DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants' claimed invention generally relates to methods for
wireless establishment of identity via bi-directional radio-frequency
identification (RFID). Spec. i-f 1. Claims 1 and 24 are the only independent
claims on appeal and reproduced below.
1. A method implemented in a computer infrastructure
having computer executable code tangibly embodied on a
computer readable storage medium having programming
instructions, the method comprising:
sending device data including at least a usemame and a
password to a transceiver;
receiving an identifier of an access point in a wireless
network from the transceiver, the transceiver sending the device
data to the access point via a security server; and
sending the device data to the access point based on the
identifier of the access point, the access point establishing a
secure connection to the computer infrastructure based on the
device data received from the transceiver and the computer
infrastructure, wherein at least one of the sending the device
data to the transceiver, the receiving the identifier, and the
sending the device data to the access point are performed using
the computer infrastructure.
24. A method of deploying a system for establishing a secure
connection between a computer infrastructure and a wireless
network, comprising:
providing the computer infrastructure, being operable to:
send device data including at least a usemame and
a password to a transceiver;
receive an identifier of an access point in the
wireless network from the transceiver, the transceiver
2
Appeal2013-010986
Application 12/953,801
sending the device data to the access point via a security
server; and
send the device data to the access point based on the
identifier of the access point, the access point establishing the
secure connection to the computer infrastructure based on the
device data received from the transceiver and the computer
infrastructure.
App. Br. 46, 48, Claims Appendix.
REJECTIONS3
The following rejections are before us for review:
I. Claims 24 and 26-30 stand rejected under 35 U.S.C. § 101.
II. Claims 1-5, 7-13, and 27 stand rejected under 35 U.S.C. § 112,
second paragraph.
III. Claims 1, 2, 5, 7-10, 12, 13, and 24 stand rejected under 35
U.S.C. § 102(b) as anticipated by Brookner (US 7,287,693 B2,
iss. Oct. 30, 2007).
IV. Claims 3, 4, 26, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brookner and Chen et al.
(US 7,661,128 B2, iss. Feb. 9, 2010, "Chen").
V. Claims 11 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brookner and Pitroda (US 5,590,038, iss.
Dec. 31, 1996).
3 The rejections of claims 1-5 and 7-13 under 35 U.S.C. § 112, first
paragraph, and claims 1-5, 7-13, 24, and 26-30 under 35 U.S.C. § 112,
second paragraph, have been withdrawn. Ans. 2.
3
Appeal2013-010986
Application 12/953,801
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
Subsequent to the filing of briefs in this appeal, the Supreme Court in
Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014), reiterated the
framework set out previously in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
However, the "machine-or-transformation test remains to be a useful and
important clue, an investigative tool, for determining whether some claimed
inventions are processes under§ 101." Bilski v. Kappas, 130 S. Ct. 3218,
3227 (2010). Therefore, we begin our analysis reviewing the Examiner's
position and Appellants' arguments as applied to the machine-or-
transformation test.
Appellants assert that independent claim 24 is directed to "a method
for deploying a system for establishing a secure connection between a
computer infrastructure and a wireless network" and recites "providing the
computer infrastructure, being operable to ... " App. Br. 3. Appellants'
dispute the Examiner's finding that the broadest reasonable interpretation of
computer infrastructure may cover only software, because "a computer
infrastructure may be used to perform the processes of the claimed invention
this is a physical structure." Id. Appellants argue that the computing device
is in communication with an access point and a transceiver, and the
computer infrastructure performs the processes of the claimed invention, and
thus, "the recited step[s] of providing the computer infrastructure includes a
physical activity that is more than an abstract idea." Id. at 4. Therefore,
4
Appeal2013-010986
Application 12/953,801
Appellants conclude that the claim is tied to a particular machine and meets
the machine or transformation test. Id.; see also Reply Br. 3 ("claim 24 is
directed to a concrete, physical system ... and involves 'devices connected
in a wireless network.'').
The Examiner argues that claim 24 is directed to a method of
deploying a system, comprising only one step, "providing the computer
infrastructure." Ans. 3. The Examiner asserts that the term "'providing' can
reasonably encompass merely providing access to computer functionality."
Id. at 4. The Examiner maintains that Appellants' Specification "reveals no
explicit definition of the term 'computer infrastructure[,]' only to mention
that it may comprise computer-executable code and/or a computer readable
storage medium." Id. (citing Spec. i-f 5). Thus, the Examiner determines
that "computer infrastructure," as recited in the claim and given its broadest
reasonable interpretation, does not necessitate hardware and therefore does
not pass the machine-or-transformation test. Id.
We agree with the Examiner that claim 24 is broad, does not recite
any structure/hardware, and only requires the performance of a single step:
"providing the computer infrastructure." The claim further requires "the
computer infrastructure, being operable to" "send" and "receive" data, but
imposes no limits on how these functions must be programmed.
The Specification also imposes no restriction on how a "computer
infrastructure" must be structured, as it describes the "send[ing]" and
"receiv[ing]" operations in functional terms. Spec. i-fi-15, 8, 9; see also Spec.
i-f 56 ("[T]he invention can take the form of a computer program product
accessible from a computer-usable or computer-readable medium providing
5
Appeal2013-010986
Application 12/953,801
program code4 for use by or in connection with a computer or any
instruction execution system."). In fact, the Specification provides that
"aspects of the present invention may take the form of an entirely hardware
embodiment, an entirely software embodiment (including firmware, resident
software, micro-code, etc.) or an embodiment combining software and
hardware aspects." Spec. i-f 18. The Specification also provides that the
functionality provided by computing device 14, "can be implemented by a
computing article of manufacture that includes any combination of general
and/or specific purpose hardware and/or computer program code." Spec. i-f
29. Thus, when claim 24 is viewed as a whole and in light of the
Specification, we agree that the broadest reasonable interpretation of
"computer infrastructure" is "entirely software."
Therefore, claim 24 does no more than lay out the concept of
deploying a system for establishing a secure connection between a computer
infrastructure and a wireless network. The claim neither refers to a specific
machine by reciting structural limitations to any apparatus, nor recites any
specific operations that would cause a machine to be the mechanism to send
and receive data. As the Examiner observes, performing the recited step of
claim 24 requires no machine.
An analysis under 35 U.S.C. § 101 begins with determining whether
an invention fits within one of the four statutorily-provided categories of
patent-eligible subject matter: processes, machines, manufactures, and
compositions of matter. 35 U.S.C. § 101. Section 101 "contains an
4 The program code may execute entirely on the user's computer, partly on
the user's computer, as a stand-alone software package, partly on the user's
computer and partly on a remote computer or entirely on the remote
computer or server. Spec. i-f 22.
6
Appeal2013-010986
Application 12/953,801
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 713-714 (Fed. Cir. 2014) (quoting Alice Corp. v. CLS Bank Int'!, 134
S.Ct. 2347, 2354 (2014)). Claim 24 is directed to a method of deploying a
system, comprising: "providing the computer infrastructure. This step
recites an abstraction-an idea with no particular concrete or tangible form.
See Ultramercial, 772 F.3d at 715. We consequently find that claim 24 is
directed to an abstract idea, and therefore within an exception to the
categories of subject matter eligible under 35 U.S.C. § 101.
Having determined that claim 24 is directed to an abstraction, we then
determine whether the claim contains an "inventive concept" to "transform"
the claimed abstract idea into patent-eligible subject matter. Alice, 134 S.Ct.
at 2357 (citing Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 132 S.Ct. 1289, 1294 (2012)). "A claim that recites an abstract idea
must include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Id. (citing Mayo,
132 S.Ct. at 1297). Furthermore, those "additional features" must be more
than "well-understood, routine, conventional activity." Mayo, 132 S.Ct. at
1298. If the claims simply instruct the practitioner to implement
the abstract idea with routine, conventional activity, they do not transform
the abstract idea that they recite. Ultramercial, 772 F.3d at 715.
In this instance, claim 24 does not transform the abstract idea, because
it merely puts into application a routine step comprising conventional
activity well-known in the art. Even assuming arguendo that the claimed
"computer infrastructure" is deemed to be limited to a computer or
computing device as argued by Appellants, the abstract idea of deploying a
7
Appeal2013-010986
Application 12/953,801
system is not meaningfully transformed by using a generic computer. We
disagree that the recited functional limitations, performing the most
rudimentary computer functions, tie the "providing" step to a particular
machine and amount to anything more than the abstract idea.
Consequently, we sustain the rejection of claim 24 under 35 U.S.C.
§ 101. Appellants do not separately argue claims 26-30, relying on the
eligibility of claim 24 (see App. Br. 5). Thus, we sustain the rejection of
claims 26-30 under 35 U.S.C. § 101 for the same reasons.
New Ground of Rejection under 35 U.S. C. § 1 OJ
Claims 1-5 and 7-13
Taking claim 1 as representative of claims 1-5 and 7-15, we initially
note that a claim directed to a process that includes a ''computer readable
storage medium~'~ despite its format executing computer program code,
should be treated no differently from the comparable process claim 24. As
the Supreme Court has explained, the form of the claims should not trump
basic issues of patentability. See Parker v. Flook, 98 S. Ct. 2522
(1978) (advising against a rigid reading of §101 that "would make the
determination of patentable subject matter depend simply on the draftsman's
art and would ill serve the principles underlying the prohibition against
patents for 'ideas' or phenomena of nature."); see also Internet Patents
Corp., 790 F.3d at 1349.
Independent claim 1, similar to independent claim 24, fails to satisfy
the Mayol Alice test. The additional features described in the claim consist of
the following: "wherein at least one of the sending the device data to the
transceiver, the receiving the identifier, and the sending the device data to
the access point are performed using the computer infrastructure." These
8
Appeal2013-010986
Application 12/953,801
additional features fail to describe anything beyond "well-understood,
routine, conventional activity." Nor do they add anything nearing an
"inventive concept." See Alice, 134 S. Ct. at 2360 (holding that claims
requiring use of a "data processing system," "communications controller,"
and "data storage unit" did not offer "meaningful limitations beyond
generally linking the use of the method to a particular technological
environment, that is, implementation via computers."). The claim when
viewed as whole is nothing more than data gathering steps performing
conventional functions that courts have routinely found insignificant to
transform an abstract idea into a patent-eligible invention.
For the foregoing reasons, we reject claims 1-5 and 7-15 under 35
U.S.C. § 101.
Rejections under 35 U.S.C. § 112, second paragraph
Regarding claim 1, the Examiner finds two instances of "sending the
device data to the access point" and deems the claim as indefinite. Ans. 5.
The second instance however further defines the "sending" step. We are
persuaded by Appellants' arguments that "the claim features are not
contradictory and it is clear that the sending the device data to the access
point is referring to the computer infrastructure, not the transceiver." Reply
Brief 5. Thus, we do not sustain the rejection of claims 1-5 and 7-13 as
being indefinite.
Regarding claims 4, 9, 13, and 27, we agree with Appellants that a
person of ordinary skill in the art in view of the Specification would
understand what is claimed. For instance, with respect to claims 4 and 27,
the Specification provides that "the computing device 14 can block the
random generation of the usemame and the password for a predetermined
9
Appeal2013-010986
Application 12/953,801
duration of time. For example, the computing device 14 may place an
expiration flag on the current usemame and password that prevents them
from being changed for one minute." Spec. i-f 45. Thus, we do not sustain
the rejections of claims 4, 9, 27 as being indefinite.
New Ground of Rejection under 35 U.S. C. § 112, fourth paragraph
Claim 13 is rejected as being of improper dependent form for failing
to further limit the subject matter of parent claim 1, because the subject
matter of claim 13 is completely outside the scope of claim 1.
Rejection under 35 U.S.C. § 102(b) as anticipated by Brookner
Appellants argue that "Brookner does not disclose (i) the transceiver
sends the device data to the access point via a security server and (ii) the
access point establishes a secure connection to the computer infrastructure
based on the device data received from the transceiver and the computer
infrastructure," as recited in independent claim 1. Reply Br. 10-11.
As to limitation (i), we agree with the Examiner's finding (Ans. 11)
because Brookner expressly describes that the transceiver 14 relates (sends)
the response communication including user credentials (the device data) to
resource station Al 0 (to the access point) via server 12, by sending resource
station AIO a password/identity of user (via a security server). See Brookner
7:30-34, 7:67-8:2; 8: 17-23 ("the server may also communicate to the
resource A, the identity (i.e. data representing the identity) of the user being
logged on.").
We are not persuaded by Appellants' argument regarding limitation
(ii). Instead, we agree with the Examiner that:
BROOKNER is clear that the host server (i.e., the security
server) determines the identity and hence the access
authorization of the tag holder based on the user credentials
10
Appeal2013-010986
Application 12/953,801
(i.e., the device data) received from the transceiver and the tag
(i.e., a portion of the computer infrastructure), thereby enabling
secure access into terminal A (i.e., the access point) (see at least
3: 1-10).
Ans. 11-12.
Therefore, we sustain the rejection of independent claim 1 as
anticipated by Brookner. We also sustain the rejection of claims 2, 7, and 10
for the same reasons, which are not argued separately except based on their
dependency on claim 1.
Claim 24
Appellants rely on similar arguments presented for claim 1 to contest
the rejection of independent claim 24 as anticipated by Brookner. See
Reply. Br. 13-16. As such, we sustain the rejection of claim 24 for the same
reasons as claim 1.
Claim 5
Claim 5 recites "[t]he method of claim 1, wherein the device data
further comprises at least one of a geographical location of the computer
infrastructure; a Media Access Control (MAC) address of the computer
infrastructure; a identification number of the transceiver; and a public key
generated by the computer infrastructure." App. Br. 46-47, Claims
Appendix (emphasis added).
We are not persuaded by Appellants' argument that Brookner "does
not show all the features of claim 5." App. Br. 28. The language of the
claim as recited requires "at least one of' the five recited features. Although
Appellants present arguments with regard to Figure 2 of Brookner (see App.
Br. 28), the Examiner, rather, relies on Figure 1 for depicting a computer
11
Appeal2013-010986
Application 12/953,801
infrastructure. See Final Act. 15 ("computer infrastructure of figure 1 ").
Figure 1 shows transceiver 14, including a transceiver identifier 14b. See
also Brookner 5:30-34. Thus, Brookner's transceiver identifier 14b
corresponds to the claimed identification number of the transceiver.
Accordingly, we sustain the rejection of claim 5.
Claim 8
Claim 8 broadly recites "prompting a user of the computer
infrastructure to acknowledge an initiation of establishing the secure
connection to the wireless device." App. Br. 47. We find Brookner's
continuous or periodic interrogation signal (prompting a user of the
computer infrastructure) to determine the presence of the RFID tag in the
area to confirm (to acknowledge an initiation) that the user is logged on the
resource station (of establishing the secure connection to the wireless
device) describes the subject matter of claim 8. Brookner 8:40-45. We note
that the claim does not require an active step to be performed by the user
(e.g., by selecting a button on a user interface), and the initial automatic
logging on upon receiving a response from the RFID tag satisfies the
claimed initiation. Thus, we sustain the rejection of claim 8.
Claim 9
The Examiner acknowledges that Brookner does not expressly
describe a secure connection that comprises a SSL encrypted communication
channel, but argues that such a connection is inherent in the context of
Brookner' s system as shown in Figure 1. Ans. 14. Appellants challenge this
finding and request reversal of claim 9. App. Br. 30-31.
"Inherent anticipation requires that the missing descriptive material is
'necessarily present,' not merely probably or possibly present, in the prior
12
Appeal2013-010986
Application 12/953,801
art." Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.
Cir. 2002) (citing In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citation omitted)). The Examiner has not established that Brookner's secure
connection is necessarily SSL. "The mere fact that a certain thing may
result from a given set of circumstances is not sufficient [to establish
inherency.]" In re Oelrich, 666 F.2d 578, 581(CCPA1981).
Therefore, we do not sustain the rejection of claim 9 as being
anticipated by Brookner.
Claim 12
Claim 12 recites "wherein a service provider at least one of creates,
maintains, deploys and supports the computer infrastructure." App. Br. 47.
The Examiner finds that the back-end host of Brookner in Figure 1
corresponds to the claimed service provider. See Ans. 14. We find no error
in that. Additionally, there is insufficient evidence of record showing a
functional relationship between the language of claim 12 and the computer
implemented process. Absent such evidence, it is reasonable to characterize
the type of information to be excluded as descriptive, falling under the
category of patentably-inconsequential subject matter. See Ex parte Curry,
84 USPQ2d 1272, 1275 (BPAI 2005) (informative). "Non-functional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious." Id. at 1274 (citing In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004)). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability).
13
Appeal2013-010986
Application 12/953,801
"Thus non-functional descriptive material, being useful and
intelligible only to the human mind, is given no patentable weight." Ex
parte Graf, Appeal 2012-003941, slip op. at 7 (PTAB July 23, 2013) (non-
precedential), aff'd, In re Graf, 585 Fed. Appx. 1012 (Fed. Cir. 2014) (Fed.
Cir. 2014) (non-precedential). "The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations." King Pharms.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010).
Thus, we sustain the rejection of claim 12.
Rejections under 35 USC§ 103(a)
Claims 3 and 26
We are not persuaded by Appellants' arguments disputing the
Examiner's findings as to claims 3 and 26. We agree with the Examiner that
Chen at column 4, line 13 through column 5, line 12 discloses generating
login credentials randomly (generating usemame and password randomly),
login credential assigned a set expiration time (setting an expiration time for
the usemame and password), and regenerating credentials upon
disconnection after expiration (regenerating usemame and password when
expiration is reached). Thus, we sustain the rejection of claim 3 and 26.
Claims 4 and 2 7
Claims 4 and 27 recite "blocking the generating of the usemame and
the password for a predetermined time." Appellants submit that the
Examiner has committed clear error by failing to address the language and
identify the features of claims 4 and 27 in the applied prior art. App. Br. 36,
39. The Examiner responds that "[i]n light of the clear§ 112, 2nd
14
Appeal2013-010986
Application 12/953,801
deficiencies outlined above, the Examiner was unable to properly and
reasonably apply prior art to this claim limitation, since the error of the
Appellant in constructing this claim made it impossible for the Examiner to
reasonably ascertain the scope of protection sought." Ans. 17-18.
As discussed above, the rejection of claims 4 and 27 as being
indefinite is improper. And because the Examiner has acknowledged not
providing any underlying factual findings for rejecting claims 4 and 27, we
do not sustain the rejection of claims 4 and 27 under 35 USC§ 103(a).
Claims 28 and 29
Appellants argue claims 28 and 29 together, arguing against the
Examiner's finding as to claim 28 only. App. Br. 40-41. Claim 28 recites
substantially similar subject matter as claim 8. We are not persuaded by
Appellants arguments for the same reasons stated above with respect to
claim 8. As such, we sustain the rejection of claim 28, and claim 29, which
is not argued separately except for its dependency on claim 28.
Claims 11 and 3 0
Claims 11 and 30 are rejected as obvious over Brookner and Pitroda.
We have considered Appellants' argument contesting the Examiner's
finding based on teachings of Pitroda, but we are not persuaded of error. We
agree with the Examiner and adopt the Examiner's findings and response to
arguments as set forth in the Answer. See Ans. 19 (citing Pitroda 9: 54--
10:8).
Therefore, we sustain the rejection of claims 11 and 30.
15
Appeal2013-010986
Application 12/953,801
New Ground ofRejection
Claim 9
Claim 9 recites "[ t ]he method of claim 1, wherein the secure
connection comprises a Secure Sockets Layer (SSL) encrypted
communications channel." As discussed above, Brookner discloses the
method of claim 1, but does not explicitly disclose the secure connection
comprising an SSL encrypted channel. However, Chen discloses at column
2, lines 27 through 30 that: "[t]he first connection may be a secure
connection, and the secure connection may be established using a transport
layer security (TLS) 30 or secure sockets layer (SSL) tunnel." One of
ordinary skill in the art would have modified the secure connection of
Brookner to comprise an SSL encrypted communications channel as taught
by Chen to ensure secure and private communications. See Chen 1 :6-8.
Thus, claim 9 is rejected as obvious over Brookner and Chen.
DECISION
The Examiner's decision to reject claims 24 and 26-30 under 35
U.S.C. § 101 is affirmed.
Claims 1-5 and 7-13 are newly rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
The Examiner's decision to reject claims 1-5, 7-13, and 27 under 35
U.S.C. § 112, second paragraph, is reversed.
Claim 13 is newly rejected under 35 U.S.C. § 112, fourth paragraph.
The Examiner's decision to reject claims 1, 2, 5, 7, 8, 10, 12, 13, and
24 under 35 U.S.C. § 102(b) is affirmed.
The Examiner's decision to reject claim 9 under 35 U.S.C. § 102(b) is
reversed.
16
Appeal2013-010986
Application 12/953,801
The Examiner's decision to reject claims 3, 26, 28, and 29 under 35
U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 4 and 27 under 35 U.S.C.
§ 103(a) is reversed.
Claim 9 is newly rejected under 35 U.S.C. § 103(a) as obvious over
Brookner and Chen.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(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
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 ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
17
Appeal2013-010986
Application 12/953,801
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)
18