Ex Parte Faller et al

Patent Trial and Appeal Board

Jul 31, 2017

13425700 (P.T.A.B. Jul. 31, 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.
13/425,700 03/21/2012 Jeremy Faller 24207-19743 9721
98449 7590 08/02/2017
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
CHUNG, MONG-SHUNE
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
pairdocketing @ ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY FALLER and ERIK WALTER
Appeal 2016-004227
Application 13/425,700
Technology Center 2100
Before THU A. DANG, JOHN A. EVANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
INTRODUCTION
In a Request for Rehearing filed May 22, 2017 (“Request,” “Req.
Reh’g.”), Appellants request rehearing of the Decision of the Patent Trial
and Appeal Board (“Board”) mailed March 30, 2017 (“Decision,” “Op.”), in
which we affirmed the final rejections of Claims 1—6, 8—16, and 18—24.
The Request alleges that the Board misapprehended and overlooked
Appellants’ arguments for the separate patentability of Claim 5. Req. Reh’g.
2. We disagree.
ANALYSIS
Request.
Appellants request Rehearing with respect to dependent Claim 5
contending the Board overlooked Appellants’ arguments “distinguishing the
Appeal 2016-004227
Application 13/425,700
elements of claim 5 from the disclosure of Galor.” Request 2. Per
Appellants, “Claim 5 recites, inter alia, ‘the unlocking subsystem further
configured to maintain the locked portion as unlocked responsive to the
metadata corresponding to the second submitted image.’” Id. Appellants
argue at least this limitation is not taught by the cited combination of
references. Id.
Separate patentability.
We agree with Appellants that our Decision considered all claims as a
group: “Appellants argue all claims as a group in view of the limitations
recited in Claim 1 and the teachings of Galor.” Decision 4.
The Examiner applied the teachings of Galor to the contested
limitation of Claim 5. Final Act. 6 (citing Galor || 64, 65, 67, 68). In
response to Appellants’ Brief, the Examiner finds:
Galor further disclosed that once the user had unlocked the user
interface, the state of the user interface transitioned from the
“tracked, locked, and inactive” state (e.g. 100) to “tracked,
unlocked, and active” state (e.g. 92), where the user interface
remains unlocked until the user interface eventually timed out
and then becomes locked again.
Ans. 23. Thus, the Final Rejection and the Examiner’s Answer
explicitly applied the teachings of Galor to the limitations of Claim 5.
Appellants did not file a Reply Brief, choosing not to respond to the
Examiner’s explicit findings with respect to Claim 5.
As noted in our Decision:
[A]dopt[s] as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner’s
Answer, to the extent consistent with our analysis below.
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Appeal 2016-004227
Application 13/425,700
Decision 4. Our Decision found, and we maintain, that Appellants’ traversal
over Galor does not materially distinguish Claim 5 from Claim 1.
Maintaining the interface in an unlocked state.
Moreover, we note that Appellants’ argument fails to track the
language of the claims.
Claim 1 recites, inter alia, a “system to selectively unlock a locked
portion of content of an electronic book,” “the locked portion being one of a
plurality of content portions,” and an “unlocking subsystem configured to
unlock the locked portion . . . thereby making the locked portion available
for display to the user.”
Claim 5 depends from Claim 1. Claim 5 (“The system of claim 1”).
As admitted by Appellants, “Claim 5 recites, inter alia, ‘the unlocking
subsystem further configured to maintain the locked portion as unlocked
responsive to the metadata corresponding to the second submitted image.’”
Request 2; Claim 5.1 We construe the claimed “unlocking subsystem” as
regulating whether a user has access to “content.”
Appellants argue: “[t]here is no suggestion in Galor of maintaining
the interface in an unlocked state.” Br. 14 (emphasis added). Neither Claim
1, nor Claim 5,2 recite the term “interface.” Appellants’ argument is not
commensurate in scope with the claims, which do not recite “interface.” See
In re Self 671 F.2d 1344, 1348 (CCPA 1982) (“Appellant’s arguments fail
1 Should prosecution continue, we suggest the Examiner review Claim 5 for
compliance with the definiteness requirements of 35 U.S.C. § 112. It is
unclear to us how an “locked portion” may be maintained as “unlocked,” as
recited and claimed.
2 The term “interface” is recited in Claim 8.
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Appeal 2016-004227
Application 13/425,700
from the outset because . . . they are not based on limitations appearing in
the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(citation omitted) (finding “the name of the game is the claim’'’).
DECISION
Based on the record before us now and in the original appeal, we are
still of the view that the rejection of Claims 1—6, 8—16, and 18—24, and in
particular, that of Claim 5, should be sustained.
We have granted the Request to the extent that we have reconsidered
our decision of March 30, 2017, but we deny the request with respect to
making any changes therein.
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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