Ex Parte FischerDownload PDFPatent Trial and Appeal BoardDec 27, 201611150820 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 11/150,820 06/10/2005 Larry G. Fischer 100.707US01 2763 34206 7590 12/29/2016 FOGG fr POWER N T T C EXAMINER 4600 W 77th Street LU, ZHIYU Suite 305 MINNEAPOLIS, MN 55435 ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): DAVID @FOGGLAW.COM docketing@fogglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARRY G. FISCHER Appeal 2015-002775 Application 11/150,820 Technology Center 2600 Before ALLEN R. MacDONALD, JASON V. MORGAN, and BRYAN F. MOORE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing.1 Appellant’s Request for Rehearing is filed under § 41.52 requesting that we reconsider our Decision of July 6, 2016, wherein we affirmed the Examiner’s rejections of claims 1—3, 5—9, 15, 16, 19, 20, 30, 32, and 39-62. We have reconsidered 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1). Appeal 2015-002775 Application 11/150,820 our Decision in light of Appellant’s comments in the request, and have found no errors. We, therefore, decline to change the Decision. Appellant’s request is denied. Appellant’s Contentions 1. Appellant contends that as to claims 1, 15, 16, 20, 30, 41, 50, and 56, the Board erred because: [The] adoption of the reasoning [of the Examiner] and incorporation of the decisions of the board made in the [’]897 Related Board Decision are evidence that the Board misapprehended and/or overlooked various aspects of the Appellant’s arguments in the Appeal Brief and the Reply Brief. Rehearing Request 2. Appellant acknowledges that the Board concluded: Appellant’s Appeal Brief in 2013-005366 raised substantially the same (1) clear articulation of the rejection issue, (2) counterintuitive and would frustration of operation (teaching away) issue, (3) lack of artisan the knowledge or skills issue, and (4) requirement of teaching or suggestion for an obviousness rejection issue, as the arguments raised in the current appeal. As to these issues/arguments we reach the same result for the same reasons. . . We incorporate those 2013-005366 decisions herein in full. Rehearing Request 2. Appellant then contends [T]he arguments raised in the [’]897 Related Appeal were not substantially the same as the arguments of the pending appeal for a number of reasons related to the claim limitations and the teachings and suggestions of the art. First, the claim language of the pending application is more narrow than the claim language of the [’]897 Related Application. While this will be discussed in more detail below, differences include features relating to providing power from a remote server unit to a remote unit across a wired analog communication medium in each of independent claims 1,15, 16, 20,30,41,50, and 56. Rehearing Request 3. 2 Appeal 2015-002775 Application 11/150,820 2. Appellant contends that as to claim 1, the Board erred because Appellant respectfully disagrees that the Board’s apparent agreement with the Examiner that the following statement provides clear articulation of why combining references together would be obvious: “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to modify a communication system of Stratford by design preferences with teachings of Wake, Wala and Hamilton-Piercy into a hybrid communication system as specified as instant claim”. Examiner’s Answer mailed November 4, 2014 (November 2014 Examiner’s Answer), p. 14, lines 19-22. Merely indicating “design preference” with conclusory language “as specified as instant claim” does not provide a clear articulation. Rehearing Request 4. 3. Appellant contends that as to claim 1, the Board erred: Because of Wake’s description of wireless communication in a portion of the Wake system being key to the Wake reference’s functionality, it would have been counterintuitive and would frustrate the operation of the Wake system to combine it with the other references to change the wireless communication of the Wake reference to be wired communication where power was supplied across a wired medium. The combination of claim features were thus uniquely challenging to derive because the skilled person would not have been prompted to augment the Wake reference in the ways necessary to combine it with teachings or suggestions of other references that could lead to the features of the independent claims. The combination of claim features yielded more than expected results to one having skill in the art at the time of filing in light of the prior art references an there would have not been a motivation to combine teachings or suggestions from the references in the way claimed in the independent claims because it would not have made sense to one having ordinary skill in the art at the time of filing to do so in 3 Appeal 2015-002775 Application 11/150,820 light of the teachings of the Wake reference regarding the wireless nature of the system. Rehearing Request 6, emphases added. 4. Appellant contends that as to claim 1, the Board erred because: Appellant has presented arguments in the context of it being counterintuitive to combine features together and it frustrating the operation of systems of particular references for various reasons at pages 26-29 of the Appeal Brief. In its decision, the Board addressed a few sections of Appellant’s argument as to why independent claim 1 was non- obvious. Unfortunately, Appellant believes the Board misapprehended and/or overlooked arguments relevant to the obviousness analysis. While the Board did cite to some language from page 22 of the Appeal Brief regarding the combination being counterintuitive and there being frustration of operation of one of the references by combining it with the others, it was only a small portion of the argument. Rehearing Request 5—6. Respectfully, the Board appears to have missed large portions of the arguments relevant to these distinctions at pages 23-29 of the Appeal Brief. Pages 23-25 describe the teachings and suggestions of the Wake reference, while pages 26-29 relate to specific reasons why it wouldn’t make sense to combine Wake with the other references to result in the claimed invention. Rehearing Request 6. Then Appellant reiterates arguments previously made in the Appeal Brief and Reply Brief. Rehearing Request 6—13. 4 Appeal 2015-002775 Application 11/150,820 ANALYSIS As to Appellant’s above contention 1, we disagree. Appellant acknowledges that the Board adopted the Examiner’s reasoning. Further, Appellant acknowledges that the Board incorporated the prior Decision of the ’897 Related Application as to four particular listed issues which are substantially the same in the current appeal. Against this backdrop, Appellant then argues the Board erred because some arguments are not substantially the same in the current appeal in that features relating to providing power from a remote server unit to a remote unit across a wired analog communication medium are more narrow than the claim of the ’897 Related Application. While Appellant correctly points out that the features relating to providing power are more narrow than in the ’897 Related Application, it is of no moment as the Board did not include the providing power features among the four explicitly listed issues that are substantially the same. As to this argued limitation, the Board never relied on the Decision of the ’897 Related Application. Rather, Appellant overlooks that instead this feature is covered by the Examiner’s reasoning which was adopted by the Board. As to Appellant’s above contention 2, we disagree. Appellant merely repeats arguments already made in their Appeal Brief at pages 18—21 and Reply Brief at page 12, and do not further elaborate on “the points believed to have been misapprehended or overlooked by the Board” as required by 37 C.F.R. § 41.52(a)(1). The Rehearing is not a blanket opportunity to merely reargue the decision of the Board as to those points with which the Appellant disagrees. Therefore, this portion of Appellant’s request is denied. 5 Appeal 2015-002775 Application 11/150,820 As to Appellant’s above contention 3, Appellant argues the Board overlooked or misapprehended that “[t]he combination of claim features were thus uniquely challenging” and “[t]he combination of claim features yielded more than expected results” (Rehearing Request 6). We disagree. Rather, Appellant’s Rehearing Request presents these particular assertions for the first time. Although Appellant attempts to connect these assertions to arguments made in the Appeal Brief and Reply Brief, these particular assertions themselves were not made. We decline to address any new arguments not originally presented. Arguments which Appellant could have made but chose not to make will be refused consideration by the Board for purposes of the present appeal. See 37 C.F.R. § 41.37(c)(iv) (2013). To the extent that Appellant reiterates arguments previously presented in the Appeal Brief or timely presented in the Reply Brief, we discuss those arguments immediately below. As to Appellant’s above contention 4, we disagree. Appellant asserts that the board missed arguments (reiterated at pages 6—13 of the Rehearing request) because the Board cited only a small portion of the arguments. That the Board did not cut-and-paste Appellant’s arguments into its decision does not equate to the Board disregarding those arguments. Rather, the Examiner addressed the particular arguments presented by Appellant, and Appellant acknowledges in the Rehearing Request that the Board adopted the Examiner’s reasoning as its own. There is no requirement that this Board catalog and specifically discuss every argument that an Appellant makes to support their contention of error in the rejection. Rather, the arguments were addressed by the Examiner in the Answer, and the Board adopted that 6 Appeal 2015-002775 Application 11/150,820 reasoning as its own. That Appellant disagrees with the ultimate result of that adoption is not an appropriate basis for a Rehearing Request. DECISION In view of the foregoing discussion, we grant Appellant’s Request for Rehearing to the extent of reconsidering our decision, but we otherwise deny Appellant’s request. 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). REQUEST FOR REHEARING DENIED 7 Copy with citationCopy as parenthetical citation