Ex Parte Fard et al

Patent Trial and Appeal Board

May 31, 2017

11462623 (P.T.A.B. May. 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.
11/462,623 08/04/2006 Assana Fard 27753-50038US 5573
132324 7590 06/02/2017
Squire Patton Boggs (US) LLP
Fernando Team
620 Hansen Way
Palo Alto, CA 94304
EXAMINER
NGUYEN, NHAT HUY T
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
wpalipdocket @ squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASSANA FARD, JOHN O. LOUCH,
RALF BRUNNER, HAROON SHEIKH,
ERIC PEYTON, and CHRISTOPHER HYNES
Appeal 2017-003409
Application 11/462,623
Technology Center 2100
Before DENISE M. POTHIER, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—39 and 41—88.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part. We present a new ground of rejection.
1 Throughout this opinion, we refer to (1) the Non-Final Action (Non-Final
Act.) mailed April 10, 2015, (2) the Appeal Brief filed December 29, 2015
Appeal 2017-003409
Application 11/462,623
Invention
Appellants’ invention relates to managing a graphical user interface.
The interface has several spaces (e.g., 304, 306, 308, 310) assigned content
(e.g., Applications A—K), which is visible when the space is active. See
Spec. 111, 7, Fig. 3. When a user launches an application (e.g., Application
A by clicking on icon 1804 labeled “A” in command bar), the application
window launches, a space activates (e.g., Space 6 in Figure 18C), and the
prior space (e.g., Space 4 in Figure 18B) becomes inactive. Id. H 81,
117—120, Fig. 18. Claim 1 is reproduced below with emphasis:
1. A method for managing content in a user interface, the method
comprising:
providing several spaces configured for having content and one or
more application programs assigned thereto, wherein any content
assigned to an active space is eligible for presentation to a user and
any content assigned to inactive spaces is not presented to the user;
registering an assignment of a first application program to a first
space;
causing first content to be presented, wherein the first content is
assigned to a second space that is active; and
in response to initiation of the first application program assigned
to the first space, causing the second space to become inactive and the
first space to become active.
The Examiner relies on the following prior art as evidence of
unpatentability:
for the arguments (App. Br.) and filed April 11, 2016 for the claims (2nd
App. Br.), (3) the Examiner’s Answer (Ans.) mailed October 20, 2016, and
(4) the Reply Brief (Reply Br.) filed December 18, 2016.
Gest
Crucs
US 2003/0179240 A1 Sept. 25, 2003
US 6,711,564 B2 Mar. 23, 2004
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The Rejection
Claims 1—39 and 41—88 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gest and Crucs. Ans. 2 40.
THE CONTENTIONS
Claims 1—5, 7—23, 26) 39, 41—83, and 85—88
Regarding independent claim 1, the Examiner finds Gest teaches
registering a first application assignment to a first space and presenting first
content, which is assigned a second, active space. Ans. 3. The rejection
turns to Crucs in combination with Gest to teach causing the second space to
become inactive and the first space to become active in response to initiating
the first application program. Id. at 3—4, 41 42.
Appellants argue Crucs teaches causing an active application to
become inactive in response to a selection of another application, but does
not “cause a desktop to which the application is assigned to become active
and another active desktop to become inactive.” App. Br. 9; Reply Br. 3.
Appellants also contend that “the proposed combination of Gest and Crucs
does not disclose accessing an application in a second virtual desktop while
in a first virtual desktop.” Id.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Gest and Crucs collectively would have taught or suggested “in
response to initiation of the first application program assigned to the first
space, causing the second space to become inactive and the first space to
become active”?
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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 1. The Examiner initially turns to Crucs in
combination with Gest to teach the disputed limitation. Ans. 3^4. In the
Response to Argument section, the Examiner elaborates indicating that
Figures 4 and 5 of Gest suggest “causing the second space to become
inactive and the first space to become active” in response to initiation of the
first application program assigned to the first space. Id. at 41 42.
Specifically, the Examiner finds that it known to switch between virtual
desktops by selecting an application and, by clicking on a particular virtual
button (e.g., 402) corresponding to one of the virtual desktops, a chosen
desktop is displayed with its specific applications. Id. at 41^42.
Appellants argue the Examiner has not suggested that such
switch[ing]’ is performed ‘in response to initiation of [an] application
program’ as claimed, but rather, in response to ‘selecting [an] image object
displayed on the taskbar.’” Reply Br. 3. To be sure, the Examiner has not
used the exact words, “in response to initiation of the first application
program,” as recited in claim 1 in the explanation of how Gest teaches the
disputed limitation. Ans. 41. Yet, the discussion of clicking on virtual
button (e.g., 402) and what is known in the art by the Examiner (see Ans.
41—42) relates to selecting or initiating a particular application when in a
specific, virtual desktop.
In particular, Gest describes virtual desktop taskbar 400 as a virtual
desktop management application. See also Gest 142. Figure 4 of Gest
displays applications (e.g., Visio 2000 and Microsoft Outlook) related to
virtual desktop 1. Gest 142, Fig. 4. When the user selects virtual desktop 2
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by selecting virtual button 402 having icon labeled “2,” virtual desktop 2
with its related applications (e.g., musicmatch Jukebox) are launched. See
id. 42-43, Fig. 5. As such, one skilled in the art would have recognized
that selecting an icon (e.g., icon 2 as shown in Figure 5) that launches a
desktop having specific applications also acts as an initiator to the desktop’s
application programs (e.g., musicmatch Jukebox) assigned to its space (e.g.,
virtual desktop 2). See id.
Also, in response this initiation using the taskbar (Ans. 42), one space
in Gest becomes inactive (e.g., desktop shown in Figure 4) and another
space (e.g., desktop shown in Figure 5) becomes active. See id., Figs. 4—5.
The Examiner reinforces this taught concept, when determining one skilled
in the art would have viewed the virtual buttons as a “logical reference” to
switch between desktops that have different applications (e.g., one desktop
for office-related applications and another desktop for internet-related
applications). See Ans. 41—42 (citing Gest 1 6). Gest also states:
It will be appreciated that, with knowledge of multi­
dimensional space and the corresponding one or more
predetermined navigation commands or rules, a user may use
this logical navigation reference to switch or navigate between
the virtual desktops . . . [T]he navigation commands may
comprise commands not associated with the GUI (e.g.,
keystrokes, etc.)
Gest 139. Thus, the rejection relies on Gest to suggest the second space
becomes inactive and the first space becomes active (e.g., switching) in
response to initiating a desktop switch and its related application programs.
Additionally, one skilled in the art would have recognized, based on
Gest’s teachings discussed above, that clicking on button 402 initiates the
virtual desktop application that is assigned to a first space (e.g., see element
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400 in Figure 5). See id., Fig. 5. Cracs reinforces the general concept that,
upon launching an application, the launched program within a space become
active while other applications become inactive is known to ordinary
artisans. Crucs 1:40-42, cited in Ans. 3. Combining this teaching in Crucs
with Gest yields no more than a second space with its applications becoming
inactive and a first space and its launched application becoming active, in
response to initiating the first application program assigned to the first space.
Id. at 3—4, 41^42.
Appellants next argue that Gest and Crucs do “not disclose accessing
an application in a second virtual desktop while in a first virtual desktop.”
App. Br. 9. In particular, Appellants argue “there is no disclosure in Gest
that, when Gest’s Desktop 1 is active, the user can access an application
assigned to Gest’s Desktop 2.” Id. As broadly as recited, the recitation
“initiation of the first application program assigned to the first space,” does
not require accessing an application in a second virtual desktop while in a
first virtual desktop as Appellants argue. App. Br. 9. That is, claim 1 does
not specify from where the program is initiated. 2nd App. Br. 2, Claims
App’x. Even so, as explained above, Gest suggests initiating a first program
assigned to a first space from a second space. We refer above for details.
Appellants assert the Examiner’s position that it is well known to
switch between desktops by selecting applications is unsupported by
substantial evidence. Reply Br. 3. The Office needs to show by a
preponderance of the evidence unpatentability of claims. See Ethicon, Inc.
v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). As explained above, the
Office has, on the record, satisfied this burden.
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For the first time in the Reply Brief, Appellants “submit[] that the
Examiner's Answer fails to include an articulation of a ‘logical and rational
reason[]’ to ‘combine the prior art references’” and thus does not present a
prima facie case of obviousness. Reply Br. 4 (citations omitted).
Specifically, Appellants contend that two statements in the Examiner’s
Answer fail to:
[AJrticulate logical and rational reasons for why it would have
been obvious “to modify the virtual desktop taught by Gest to
include, in response to initiation of the first application program
assigned to the first space, causing the second space to become
inactive and the first space to become active of Crucs.”
Id. (citing Ans. 25).
These arguments are waived. 37 C.F.R. § 41.41(b)(2). To the extent
these arguments are necessitated by arguments raised in the Examiner’s
Answer, we are not persuaded. Much of the rejection for claim 1 relies on
the teachings in Gest—not Crucs. See Ans. 2-4, 41^42. Crucs is cited to
reinforce the teachings of Gest concerning making launched elements active
and others inactive, as previously explained. Id. at 3^4. Crucs also teaches
a technique for managing numerous applications or multi-processing, where
Crucs explains that the process permits for launched applications to remain
loaded and running but that only one is active at one time. Crucs 1:35—45,
cited in Ans. 3. Thus, when combined with Gest, the Gest/Crucs
combination results in a method of managing applications within desktops or
spaces, such that one space with an application is active at a time.
Also, as explained here and in the Answer, the combination allows a
user to switch between desktops by selecting an icon (e.g., button 402),
which in turn, initiates an application within the launched desktop while
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making the other desktop inactive. See Ans. 4:41^42. We refer above for
details. Accordingly, the record provides reasons with a rational
underpinning for “causing the second space to become inactive and the first
space to become active” in response to initiating the first application
program assigned to the first space as recited in claim 1.
Lastly, for independent claims 31, 32, 57, and 76, which recite similar
limitations to that disputed in claim 1, Appellants refer to the arguments
presented for claim 1. App. Br. 12. We are not persuaded for the above
reasons.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claims 1, 31, 32, 57, and 76 and dependent
claims 2—5, 7—23, 26—30, 33—39, 41—56, 77—83, and 85—88 not separately
argued.
Claim 6
Claim 6 depends from claim 1 and further recites “comprising
assigning application program content also to multiple other spaces, wherein
the application program content will be visible when any of the multiple
other spaces are active.” 2nd App. Br. 3, Claims App’x. Appellants argue
the Examiner has not presented a prima facie case for obviousness for this
claim. App. Br. 10 (citing Gest 145). In particular, Appellants assert
paragraph 45 does not mention assigning application program content to
multiple virtual desktops and displaying the content on those multiple virtual
desktops. App. Br. 10.
The Examiner determines that Gest teaches the limitations in claim 6.
Ans. 5 (citing Gest 145). Specifically, the Examiner states “if the user
selects desktop 1, the applications assigned to 1 will be active and displayed
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to the user. The other desktops would become inactive.” Ans. 5. In the
Response to Argument section, the Examiner discusses the virtual desktop
taskbar 400. See Ans. 41^42.
On balance, the record supports Gest teaches assigning application
program content to multiples spaces. As discussed above, Gest shows in
both Figures 4 and 5 a virtual desktop taskbar 400, which is part of a virtual
desktop management application (e.g., application program content), and
each virtual desktop (e.g., Figures 4 and 5) is a “space” as recited. Gest
142, Figs. 4—5. Thus, given this teaching, Gest suggests the taskbar
application content (e.g., 400) will also be included both in a user-created
“Internet Desktop” and “Office Desktop.” See Gest 145, cited in Ans. 5.
This taskbar 400 in Figures 4 and 5 is similar to the “sticky,” discussed in
the Specification, which “is automatically assigned to all of the spaces and
will appear when each of them is active.” Spec. 149. Accordingly, Gest
teaches or suggests application program content will be visible when “any of
the multiple other spaces are active as recited.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claim 6.
Claims 24 and 25
Claim 24 depends from claim 1 and further recites “the first content is
automatically assigned to the second space because the first content has a
type that has previously been assigned as belonging in the second space.”
2nd App. Br. 6, Claims App’x. Appellants argue that Gest fails to teach
content is automatically assigned to virtual desktop because the user in Gest
organizes applications into predefined groups. App. Br. 11. We are not
persuaded.
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The Examiner turns to Gest to teach claim 24’s limitations. Ans. 12
(citing Gest 14). In particular, the Examiner refers to Gest’s GUI-based
systems that allows the user (1) to manage computer applications and
taskbars and (2) to organize applications into predefined groups based on
their function. Gest 14, cited in Ans. 12. Gest thus teaches applications are
assigned to a specific group based on function (e.g., type). Gest 14.
Combining this discussion with the further teaching in Gest that a user can
create different desktops as previously discussed (e.g., “Internet Desktop”
and “Office Desktop” for different types of applications) (id. 1 8), Gest
suggests to one skilled in the art assigning first content to a second space
based on their type.
For example, a user may organize or define applications that perform
Internet-related functions into a predefined group as suggested by Gest. See
id. 4, 8, 45. Given the predefined function-based organization may also
relate to the created desktops (e.g., Internet applications), one skilled in the
art would have desired to associate automatically the predefined group and
any applications added to the group with the created, virtual “Internet
Desktop” for ease of use and to simplify the user’s involvement. See id. As
such, Gest suggests automatically assigning first content (e.g., content
associated with the predefined Internet-based functions) to a second, active
space (e.g., the virtual “Internet Desktop”) because the first content has a
type (e.g., the predefined Internet-based functions) that has been previously
been assigned as belonging the second space. Moreover, broadly providing
an automated technique for a known, manual activity that accomplishes the
same result (e.g., organizing applications by function, such as Internet-
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related operations) is not sufficient to distinguish over the prior art. See In
re Vernier, 262 F.2d 91, 95 (CCPA 1958).
On balance, we find the evidence of record favors the Examiner’s
position. Appellants have not persuaded us of error in the rejection of claim
24 and dependent claim 25 not separately argued.
Claim 84
Claim 84 depends from claim 1 and further recites, in pertinent part,
“moving the first application program from the first workspace to the second
workspace in response to an input[ and] registering a relocation of the first
application program to the second workspace!)]” 2nd App. Br. 18, Claims
App’x. For this claim, the Examiner turns to Gest. Ans. 38 (citing Gest || 4
and 35). Appellants contend paragraph 4 of Gest does not teach moving an
application program for one virtual desktop to another, but rather moving
icons representing applications on a desktop. App. Br. 11—12. Appellants
also argue Gest’s paragraph 35 does not teach registering a relocation of an
application program from one workspace to another. Id. at 12.
Gest teaches more than moving icons on a desktop as argued (App.
Br. 11—12) and, as explained above, suggests that the applications can be
organized into predefined groups based on function. That is, Gest teaches a
user may organized applications into predefined groups based on function
and manage applications more easily. Gest || 4, 35, cited in Ans. 38. As
noted above, Gest also teaches a user can create different desktops (e.g.,
“Internet Desktop” and “Office Desktop” for different types of applications).
Gest | 8, cited in Ans. 41. Thus, when combining these teachings, one
skilled in the art, employing background knowledge and creative inferences,
would have recognized Gest suggests moving a first application program
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from its originally assigned, first workspace2 to a second workspace in
response to organizing an application with a predefined group. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
To illustrate, Gest originally assigned an office-related application
(e.g., Microsoft Word and Excel shown in Figure 4) to a default desktop
(e.g., 100 in Figure 1). Gest, Fig. 1. Upon organizing applications into a
predefined group based on function, such as office operations, and creating a
virtual desktop, such as the “Office Desktop,” Gest suggests a first
application program (e.g., Microsoft Excel) is moved from a first workspace
(e.g., the default desktop 100) to a second workspace (e.g., the virtual
“Office Desktop.”). See Gest || 4, 8, 35, 45. An ordinarily skilled artisan,
employing background knowledge and creative inferences, would have also
recognized that this reorganization would have predictably resulted in
registering the predefined-group organization (e.g., a relocation) of
applications to the second workspace (e.g., the “Office Desktop”), as recited
in claim 84 in order for the Gest system properly defined the groups based
on function with its associated virtual desktop. See Gest 14.
Given the evidence in the record, Appellants have not persuaded us of
error in the rejection of claim 84.
Claims 58—75
Regarding independent claim 58, Appellants argue Gest and Crucs
cannot be properly mapped to “a second view displayed in a space view
mode, the second view presenting the first and second spaces separately,
each space including the respective assigned subset of the current user
2 Notably, claim 1 recites a “first space” not a “first workspace,” as recited
in claim 84.
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interface contents.” App. Br. 4. Specifically, Appellants contend the
proposed Gest/Cracs combination does not show the multiple spaces in its
second view as recited. Id.
Claim 58 recites “a second view displayed in a space view mode, the
second view presenting the first and second spaces separately, each space
including the respective assigned subset of the current user interface
contents.” 2nd App. Br. 13. During examination of a patent application, a
claim is given its broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citation omitted). We presume that claim terms have their ordinary and
customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that
the term would have to a person of ordinary skill in the art in question.’”
(citation omitted)). On the record, the recited phrase, “space view mode”
does not have a customary meaning. We turn to the disclosure for an
understanding of this phrase.
The Specification describes four mode— “a non-space mode 602, a
view mode 604, [a] space edit mode 606, and a zoom-in mode 608.” Spec.
1 61, Fig. 6. “When the system is in view mode 604, all configured spaces
are displayed by the system, for example in a grid of spaces. View mode
functionality can be considered a “zoom-out” perspective compared to the
zoom-in mode 608, where a single space is shown.” Id. 1 63, Fig. 6.
Although the disclosure does not define a view mode, this discussion
informs our construction of the recited “space view mode” in claim 58 and
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how one skilled in the art would have understood this recited phrase to
include a view where all configured spaces are displayed.
The Examiner’s mapping of the recited “second view displayed in a
space view mode” to Gesf s Figures 4 and 5 does not explain sufficiently
how these figures disclose a “view displayed in a space view mode” (e.g., all
spaces are displayed) as recited. See Ans. 24, 40-42. The Examiner refers
to multiple virtual desktops that employ a virtual desktop taskbar 400 and
buttons 402 correspond to one of the virtual desktops. Ans. 24, 40-41. The
Examiner further discusses how an artisan would know how to switch
between desktops. See id. at 41 42. But, these discussions fail to explain
adequately how these multiple virtual desktops are a “view displayed in a
space view mode” as recited. See id. The Examiner also discusses Gesf s
Figure 7 and how to define and customize a virtual desktop. Id. at 42 (citing
Gest, Fig. 7). This discussion does not assist in clarifying what in Gest
corresponds to the recited “second view displayed in a space view mode” in
claim 58.
The Examiner further discusses a notification system taught by Gest
11 8, 45, 70, cited in Ans. 41. Gest teaches using a visual cue in a particular
desktop (e.g., active virtual desktop 2) when some system activity on
another virtual desktop requires attention. Gest 170, Fig. 15. Yet, the
Examiner has not sufficiently explained how this visual cue or notification
within a virtual desktop or space3 is a separate, second space within the
3 The disclosure defines “a space” as “herein, a space is a grouping of one or
more applications, or windows, in relation to other applications or windows,
such that the program(s)/applications of a single space is visible when the
space is active, and so that a view can be generated of all spaces and their
contents.” Spec. 134.
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recited “second view displayed in a space view mode,” as recited in
claim 58. The cited teachings therefore do not adequately teach the recited
“second view displayed in a space view mode, the second view presenting
the first and second spaces separately,” as recited in claim 58.
Given the record and the particular findings, we determine the
Examiner has not demonstrated Gest teaches or suggests the disputed
“second view displayed in a space view mode, the second view presenting
the first and second spaced separately” recited in claim 58.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of (1) independent claim 58 and (2) dependent claims 59—75 for
similar reasons.
NEW GROUND OF REJECTION
Claims 58—75 are rejected under 35U.S.C. § 112, second paragraph
(pre-AIA) as being indefinite by failing to claim particularly and distinctly
claim the subject matter of the invention.
“As the statutory language of‘particularity]’ and ’distmct[ness]'
indicates, claims are required to be cast in clear-... as opposed to ambiguous
vague, indefinite-...-terms. It is the claims that notify the public of what is
within the protections of the patent, and what is not.” In re Packard, 751
F.3d 1307, 1313 (Fed. Cir. 2014). We determine that the phrase,
a first view displayed in a non-space mode, the first view
presenting current user interface contents wherein first and
second subsets of the current user interface contents have been
assigned to first and second spaces, respectively, wherein any
content assigned to an active space is eligible for presentation to
a user and any content assigned to inactive spaces is not
presented to the user
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in claim 58 does not notify the public as to what is the scope of claim 58 is.
As noted above, a claim is given its broadest reasonable construction
“in light of the specification as it would be interpreted by one of ordinary
skill in the art.” Am. Acad. ofSci., 367 F.3d at 1364. Specifically, regarding
“a non-space mode,” the disclosure states:
While in the non-space mode 602, spaces are disabled and the
system provides access to one or more application programs
without displaying spaces, e.g., all non-minimized program
windows are displayed. Following the above example of FIG.
3, non-space mode 602 can cause the program windows (320-
354) corresponding to all of the applications A-K to be shown
simultaneously on the display.
Id. 1 62 (emphases added), Fig. 6. As such in a non-space mode, spaces are
disabled and no spaces are displayed. Id.
That language of claim 58 of “first view displayed in a non-space
mode” contrasts with the above portion of the Specification. As claimed, the
first view presents current user interface contents and “subsets of the current
user interface contents have been assigned to first and second spaces.” 2nd
App. Br. 13. But, according to the disclosure, spaces are disabled in a
non-space mode. Id. 1 62. Additionally, claim 58 recites “any content
assigned to an active space is eligible for presentation to a user and any
content assigned to inactive spaces is not presented to the user.” 2nd App.
Br. 13. But, according to the disclosure, a non-space mode displays all
applications without regard to the spaces and without concern as to whether
a space is active. See id. 1 62.
Given these inconsistencies between the disclosure and claim 58, the
scope of claim 58 and, in particular, the boundaries of the recited “first view
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displayed in a non-space mode” that presents content assigned to first and
second spaces as well as presenting only content assigned to an active space
is not clear. The Specification discusses other modes, such as the “zoom-in
mode,” which according to the disclosure as explained above, permits one or
more selected spaces to be shown when the space is active. See Spec. 1 65.
Yet, because claim 58 explicitly recite a “non-space mode,” claim 58 is not
reciting the discussed “zoom-in” mode and the scope of claim 58 remains
ambiguous.
Accordingly, pursuant to our authority under 37 C.F.R. 41.50(b), we
reject claim 58 under 35U.S.C. § 112, second paragraph (pre-AIA) as being
indefinite. Claims 59—75 are also rejected under 35U.S.C. § 112, second
paragraph as being indefinite due to their dependency on claim 58.
DECISION
We affirm the Examiner’s rejection of claims 1—57 and 76—88 under
§103.
We reverse the Examiner’s rejection of claims 58—75 under 35 U.S.C.
§103.
We present a new ground of rejection for claims 58—75 under 35
U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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-IN-PART;
37 C.F.R, 41.50(b)
18