Ex Parte Falkenburg et al

Patent Trial and Appeal Board

Jan 12, 2018

14106299 (P.T.A.B. Jan. 12, 2018)

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.
14/106,299 12/13/2013 David Robbins Falkenburg 337722-309701/P6655USC1 6714
133036 7590 01/17/2018
DLA Piper LLP (US)
2000 University Avenue
East Palo Alto, CA 94303-2215
EXAMINER
BUI, THUY T
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
ApplePros Admin @ dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROBBINS FALKENBURG, MICHAEL J. NUGENT,
DUNCAN ROBERT KERR, and AARON LEIBA
Appeal 2017-008274
Application 14/106,299
Technology Center 2100
Before ROBERT E. NAPPI, ERIC S. FRAHM, and SCOTT B. HOWARD,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge FRAHM.
Opinion Concurring filed by Administrative patent Judge NAPPI.
DECISION ON APPEAL
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Application 14/106,299
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4—21, and 23—25. Claims 3 and 22 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:1
Giroti US 2003/0018700 Al Jan. 23, 2003
Kurlander US 2007/0002011 Al Jan. 4, 2007
Kumar US 2009/0282169 Al Nov. 12, 2009
Falkenburg US 8,645,327 B2 Feb. 4, 2014
1 Although the Examiner states in the heading of the rejection of claims 4
and 5 under 35 U.S.C. § 103(a) on page 25 of the Final Rejection that
Pilosof (US 2009/0234902 Al; published Sept. 17, 2009) is relied upon, this
is harmless error because Kumar is discussed in relation to the merits of the
rejection (see Final Act. 25—26). Pilosof was relied upon in the Final
Rejection mailed August 13, 2014, but was replaced with Kumar after
Appellants added the currently disputed claim limitations to the independent
claims in the Amendment filed December 15, 2014.
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Examiner’s Rejections
The Examiner provisionally rejected claims 1, 2, 4—21, and 23—25 for
non-statutory, obviousness-type double patenting over claims 1—24 of
Falkenburg. Final Act. 3—12.
The Examiner rejected claims 1, 2, 6—10, 12—21, 23, and 25 under 35
U.S.C. § 102(e) as anticipated by Kumar. Final Act. 13—24; see also Ans. 3.
The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Kumar and Giroti. Final Act. 25—26.
The Examiner rejected claims 11 and 24 under § 103(a) as
unpatentable over Kumar and Kurlander. Final Act. 26—29.
ANAFYSIS
Double Patenting Rejection
The Examiner rejected claims 1, 2, 4—21, and 23—25 for non-statutory,
obviousness-type double patenting over claims 1—24 of Falkenburg.
Appellants do not respond, or otherwise show the rejection to be in error.
Accordingly, the double patenting rejection is sustained pro forma.
Anticipation and Obviousness Rejections
Claims 1, 2, 6—10, 12—21, and 23—25 stand rejected for anticipation or
obviousness over Kumar (alone or in combination with other references).
We do not sustain the anticipation rejection of claims 1, 2, 6—10, and 12—19
for the reasons presented with regard to independent claims 1,15, and 18
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Application 14/106,299
found at page 10 of the Appeal Brief.2 Appellants contend (App. Br. 10),
and we agree, that Kumar fails to describe “determining whether the
distributed personal data bank stores the specific electronic files on two or
more different ones of the different computing devices,” as recited in
independent claim 1 (emphasis added), and similarly recited in independent
claims 15 and 18. Notably, remaining independent claim 20 does not
contain this limitation, and Appellants do not present any arguments as to
claim 20.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s anticipation rejection of claims 1,2, 6—10, and 12—19 over
Kumar, and we sustain the anticipation rejection of claims 20, 21, 23, and 25
pro forma. Because claims 4, 5, and 11 are rejected under distinct
substantive grounds (rejected for obviousness over Kumar taken with
various secondary references) different from those of claim 1 (anticipation
by Kumar), and Appellants do not present any separate arguments as to the
obviousness rejections of claims 4, 5, 11, and 24, Appellants have not shown
2 When a dependent claim and the independent claim it incorporates are not
separately argued, precedent guides that absent some effort at distinction, the
claims rise or fall together. See Gardner v. TEC Sys., Inc., 725 F.2d 1338,
1350 (Fed. Cir. 1984) (en banc). Therefore, we do not sustain the rejections
of dependent claims 2, 6—10, 12—14, 16, 17, and 19 for the same reasons as
provided for claims 1,15, and 18 from which these claims respectively
depend. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[Djependent claims are nonobvious if the independent claims from which
they depend are nonobvious . . . .”); see also In re Nielson, 816 F.2d 1567,
1569, 1572 (Fed. Cir. 1987) (dependent claims, not argued separately, fall
with the independent claims, even though the dependent claims were
rejected based on additional (or different) references.).
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that the Examiner erred in rejecting claims 4, 5, 11, and 24, and we sustain
the obviousness rejections pro forma. In re Lovin, 652 F.3d 1349, 1356
(Fed. Cir. 2011) (the Board may reasonably interpret 37 C.F.R § 41.37, the
rule governing the briefing requirements in ex parte appeals, “to require
applicants to articulate more substantive arguments if they wish for
individual claims to be treated separately.”); see also Ex parte Frye, 94
USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”) (“[T]he Board will
generally not reach the merits of any issues not contested by an appellant.”);
37 C.F.R. § 41.37 (c)(l)(iv) (“Each ground of rejection must be treated
under a separate heading.).3
Conclusions
The double patenting rejection of claims 1, 2, 4—21, and 23—25 is
sustained pro forma.
The Examiner’s erred in rejecting claims 1, 2, 6—10, and 12—19 as
being anticipated by Kumar.
Appellants have not shown the Examiner erred in rejecting claims 20,
21, 23, and 25 as being anticipated by Kumar.
3 We differentiate the outcome for claims 4, 5, and 11 (rejected for
obviousness) from the outcome of claims 2, 6—10, 12—14, 16, 17, and 19
(which depend from claims 1,15, and 18 rejected for anticipation) on the
basis that claims 4, 5, and 11 are rejected on a different statutory basis, and
therefore, the precedent cited supra in footnote 2 does not apply, because in
each of Gardner, In reFritch, and In re Nielson the dependent claims were
rejected over the same statutory grounds as the respective independent
claims.
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Appellants have not shown the Examiner erred in rejecting claims 4,
5, 11, and 24 as being obviousness over Kumar and the various secondary
references.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4—21, and 23—25 for
double patenting is affirmed, pro forma.
The Examiner’s decision rejecting claims 1, 2, 6—10, and 12—19 for
anticipation is reversed.
Based on Appellants’ failure to present separate arguments, the
Examiner’s decision rejecting claims 4, 5, 11, 20, 21, and 23—25 for
anticipation or obviousness is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision rejecting claims 1,
2, 4—21, and 23-25 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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).
AFFIRMED
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Application 14/106,299
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROBBINS FALKENBURG, MICHAEL J. NUGENT,
DUNCAN ROBERT KERR, and AARON LEIBA
Appeal 2017-008274
Application 14/106,299
Technology Center 2100
Before ROBERT E. NAPPI, ERIC S. FRAHM, and SCOTT B. HOWARD,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
I agree with the Majority’s decision concerning the affirmance
of the double patenting rejection, and the rejections of claims 20
through 25 as being obvious or anticipated. I write separately to
address the rejection of 4, 5 and 11 under 35 U.S.C. § 103(a). These
claims depend upon claim 1, and the Examiner’s rejections of these
claims, relies upon the teachings of Kumar to teach the limitations of
independent claim 1. See Final Act. 25—26. The Examiner has not
shown that the limitation addressed by the majority is obvious. Thus,
I would reverse the Examiner’s rejection of claims 4, 5, and 11 for the
same reasons as discussed with respect to claim 1 and because there is
no finding on the record that the disputed claim 1 limitation is
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obvious. I encourage the Examiner to consider whether the disputed
limitation of claim 1 is obvious.
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