Ex Parte Gan et al

Patent Trial and Appeal Board

Aug 11, 2016

11834777 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111834,777 08/07/2007
37945 7590 08/15/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Yi Min Gan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CN920060064US 1 1286
EXAMINER
COSBY, LAWRENCE V
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI MIN GAN, LING JIN, QING TAO SUN, and ZHE XIANG
Appeal2014-006597
Application 11/834,777
Technology Center 2400
Before TERRENCE W. McMILLIN, KAMRAN JIV ANI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on the Request for Rehearing ("Request") seeking
reconsideration of the Board's decision in this matter dated June 2, 2016
("Decision"). We have reviewed and considered all the arguments made in
the Request. We grant the request only to the extent that Appellants'
arguments in the Request were considered. The Request is denied with
respect to making any changes in the Decision.
Appeal2014-006597
Application 11/834,777
ANALYSIS
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52(a)(l). 1 The error which Appellants contend occurred in
the Decision was: "the Board's adoption of the Examiner's claim
interpretation that Goodman's 'filtering' is equivalent to the claimed
'authenticating' action." Request 5. However, Appellants fail to identify
any points misapprehended or overlooked by the Board in the Decision.
Appellants contend the Board "provided new arguments for the
rejection of Claim 1." Request 2. To the extent the Decision contains new
arguments which support the rejection, the alleged "new arguments" were in
addition to the Board relying on and adopting the Examiner's findings,
reasoning and conclusions. Decision 3 ("We agree with and adopt the
Examiner's findings, reasoning, and conclusions as set forth in the Final
Office Action (Final Act. 2-25) and the Examiner's Answer (Ans. 2-29)").
With regard to the first alleged "new argument," it was made in
responding to Appellants' argument that the cited combination of references
failed to teach or suggest, "storing, in the one or more memory elements
registration information of services registered by a message receiving device
with a service provider from a message sending device," as recited in claim
1. Decision 3--4. As clearly expressed in the Decision, the Board relied on
1 37 C.F.R. § 41.52(a)(4) provides: "New arguments that the Board's
decision contains an undesignated new ground of rejection are permitted."
In the Request, the Appellants do not contend the Decision contains an
undesignated new ground of rejection. The Decision clearly does not
contain an undesignated new ground of rejection. Instead, the Decision
analyzes and affirms the rejections made by Examiner in the Final Office
Action in light of the arguments made by Appellants.
2
Appeal2014-006597
Application 11/834,777
the detailed findings and citations provided by the Examiner in the Answer
and Final Office Action that Appellants failed to address in the Appeal
Brief. 2 We are not persuaded it was error for the Board to quote from the
"Background Art" section of Appellants' Specification in order to show
additional support for the rejection.
Second, Appellants allege it was a "new argument" for the Board to
state in the Decision that "Appellants provide no definition or interpretation
of 'authenticating.'" Request 2. The Board made this statement in response
to Appellants' arguments relating to a limitation that contained the word
"authenticating." See Decision 5 ("Appellants argue Goodman fails to teach
'authenticating whether the message is sent by a service registered with the
service provider"'). However, the Board clearly indicates it relied on the
detailed findings and citations to multiple passages in Goodman provided by
the Examiner to affirm the rejection and also upon "Appellants['] fail[ure] to
explain how or why the term 'authenticating' should be construed so as to
distinguish claim 1 from the cited art." Decision 5.
Appellants have not persuaded us of error in the Decision. Thus, we
discern no reason to change the Decision.
CONCLUSION
We deny the Request to make changes in the Decision.
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).
DENIED
2 Appellants chose not to file a Reply Brief.
3