Ex Parte Fitzgibbon et al

Patent Trial and Appeal Board

Dec 30, 2016

13777787 (P.T.A.B. Dec. 30, 2016)

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.
13/777,787 02/26/2013 James J. Fitzgibbon 5569-98843-US 9907
22242 7590 01/03/2017
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
01/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. FITZGIBBON and ERIC GREGORI
Appeal 2014-009645
Application 13/777,787
Technology Center 2400
Before: THU A. DANG, ELENI MANTIS MERCADER, and JOHN R.
KENNY, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2014-009645
Application 13/777,787
Appellants requested a rehearing of our Decision dated October 3rd,
2016, wherein we affirmed the rejections of claims 1—9 and 14—18.
Appellants argue that because we relied on a different rationale to
combine than the one provided by the Examiner, we should enter new
grounds of rejection (Req. Reh’g 2—3).
The Examiner cited to paragraph 11 of Farris that states for added
security further Boolean manipulation and further processing of the ternary
data is performed (see Ans. 3^4; para. 11), but did not rely for this statement
as the motivation to modify Farris with Warner. The Examiner identified
the particular Boolean manipulation in the communications system of
Warner wherein data is converted from ternary to binary to transmit the
binary representation of the data for added reliability (see Ans. 5; col. 1,11.
30-45).
In our Decision, we agree with the Examiner and adopt the
Examiner’s findings. We are still of the view that the invention set forth in
the pending claims would have been obvious in view of the teachings and
suggestions of the cited references under 35 U.S.C. § 103(a). This Decision
on Appellants’ Request for Rehearing is deemed to incorporate our earlier
Decision by reference. See 37 C.F.R. § 41.52(a)(1).
As set forth in our Decision, one skilled in the art would have
recognized that the particular Boolean manipulation as taught by Warner
could have substituted the additional Boolean manipulation of Farris, as
described in paragraph 11, for added security as recognized in Farris.
Substituting one Boolean manipulation for another, both manipulations
shifting data, would have been within the skill of an ordinary artisan. Farris
already recognized that further shifting or conversion of data would add
further security, the modification then, simply changes one Boolean
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Appeal 2014-009645
Application 13/777,787
technique for another in communication systems. (Id.) An artisan is
presumed to possess both skill and common sense. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).
We do not agree with Appellants’ assertion regarding infinite
possibilities of Boolean manipulations because one skilled in the art at the
time of the invention would know based on the teachings of Farris and
Warner applicable Boolean manipulations to provide added security (see
Req. Reh’g 3—5). In other words, paragraph 11 of Farris teaches added
security when further Boolean manipulation and further processing of the
ternary data is performed (see Ans. 3^4; para. 11). Warner provides the
teaching of Boolean manipulation wherein data is converted from ternary to
binary to transmit the binary representation of the data for added reliability
(see Ans. 5; col. 1,11. 30-45). Accordingly, one skilled in the art would
substitute Boolean manipulation as taught by Warner for added security as
suggested by Farris. To do otherwise would imply that every time a
Boolean manipulation is found to further process ternary data a patent would
be granted, and that is not the case.
We agree with Appellants that our articulated motivation to combine
is different than the one provided by the Examiner (Req. Reh’g 2—3).
Accordingly, we designate new grounds of rejection for claims 1—9 and 14—
18.
Accordingly, Appellant’s request for rehearing has been granted to the
extent that our decision has been reconsidered, and we modified our opinion
to enter new grounds of rejection. Therefore, we grant Appellants’ request
for rehearing, and we hereby designate that the rejection of claims 1—9 and
14—18 under 35 U.S.C. § 103 (a) is reversed, and we enter new grounds of
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Appeal 2014-009645
Application 13/777,787
rejection for these claims only changing the motivation to combine and
otherwise adopting the Examiner’s findings in the Final Action and the
Answer.
This decision contains new grounds 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 Patent Owner, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds 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.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
REHEARING GRANTED
37 C.F.R, $ 41.50(b)
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