Ex Parte Gillick

Patent Trial and Appeal Board

Sep 21, 2017

13092868 (P.T.A.B. Sep. 21, 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.
13/092,868 04/22/2011 John Gillick 7535
7590
John B. Gillick, Jr.
8 Franklin Ave
Claymont, DE 19703
09/22/2017 EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2144
MAIL DATE DELIVERY MODE
09/22/2017 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 JOHN GILLICK
Appeal 2014-002478
Application 13/092,868
Technology Center 2100
Before JEAN R. HOMERE, CAROLYN D. THOMAS,
and KARA L. SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed June 29, 2016, Appellant requests a reconsideration
under 37 C.F.R. § 41.52 from the Decision on Request for Rehearing
(“Decision” or “Req. Reh’g Dec.”) of the Patent Trial and Appeal Board
(“Board”), dated April 29, 2016. In the Decision, we reiterated our
affirmance of the Examiner’s rejections of claims 1, 4—6, 9—11, and 14—21.
Req. Reh’g Dec. 2—6.
Appeal 2014-002478
Application 13/092,868
ANALYSIS
In the present Request for Rehearing (“Req. Reh’g”), Appellant
presents two principal arguments. Req. Reh’g 2—13. We address
Appellant’s arguments seriatim.
Claims 16, 18, and 20
First, Appellant alleges the Board misapprehends Appellant’s
argument that McNally teaches away from edits by non-collaborators. Req.
Reh’g 2. Appellant reiterates McNally’s statement that “[ojther than the
owner and the collaborators, no one else can change the public facing
version of the text,” teaches away from its possible combination with
Ben-Schachar. Id. at 3^4 (citing McNally 140). In particular, Appellant
alleges the Board erred in its justification for the proposed combination that
McNally is not relied upon to teach the disputed limitation. Id. at 4.
According to Appellant, irrespective of Ben-Schachar’s disclosure of
allowing editing in a collaborative environment and a non-collaborative
environment, McNally’s cited disclosure teaches away from the proposed
combination. Id.
This argument is not persuasive. Appellant misconstrues the finding
we made in the Decision. In particular, we did not hold that “the ‘teaching
away’ for a particular feature must be located in the reference being relied
upon for that particular feature,” as incorrectly characterized by Appellant.
Id. Instead, in explaining the structure of the proposed combination, we
simply noted that the Examiner relied upon Ben-Schachar to teach the
permissive editing in both a collaborative environment and a non-
collaborative environment. Req. Reh’g Dec. 4.
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Appeal 2014-002478
Application 13/092,868
Further, Appellant alleges the Board erred in finding that “McNally’s
restriction of allowing owners and collaborators to apply edits does not teach
away from suggesting edits by non-collaborators.” Req. Reh’g 4 (citing
Req. Reh’g Dec. 4). According to Appellant, McNally’s disclosure that
“other users can be authorized to edit the knol” simply means users can be
authorized to collaborate (i.e., edit the knol = changing the public-facing
version of the text). Id. at 4—5 (citing McNally 40, 44). Therefore,
Appellant submits because McNally discloses authorized users can suggest
edits, which can only be applied by owners and collaborators to change the
public facing version, McNally’s disclosure of restricting the application of
edits to owners and collaborators teaches away from non-collaborators
automatically integrating an edit into the text. Id. at 5.
Appellant’s argument is not persuasive. A reference teaches away
from a claimed invention if it “criticize[s], discredits], or otherwise
discourage[s]” modifying the reference to arrive at the claimed invention. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). While we agree with
Appellant that McNally discloses restricting editing the public-facing
version of the knol to owners and collaborators, we do not agree with
Appellant that such disclosure teaches away from “others” editing. Id. at 5.
Instead, McNally discloses that the owner can authorize “others” to edit (i.e.,
collaborate) or simply to suggest the edit (non-collaborate). McNally Tflf 40,
44. According to McNally, only owners and collaborators can edit the
public-facing version of the knol, but “others can provide suggested edits to
the current public-facing version of the knol.” Id. 144. We disagree with
Appellants that this “clearly and unambiguously teaches away from ‘others’
causing an automatic (e.g., without manual review/intervention) change to
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Appeal 2014-002478
Application 13/092,868
the public facing version.” Req. Reh’g 5. See Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (“A reference does not
teach away,... if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.”); Fulton, 391 F.3d at 1201 (“mere
disclosure of alternative designs does not teach away”).
Therefore, although McNally’s disclosure precludes non-collaborators
from editing the public-facing version of the knol, McNally does not
preclude the system from being used in a non-collaborative environment
because users designated as non-collaborators (“others”) are allowed to
suggest edits, which are subsequently applied by collaborators.
Accordingly, we maintain our finding that McNally’s disclosure does not
teach away from non-collaborators suggesting edits as required by claim 16.
Appellants further argue “Ben-Schachar may describe collaborative
group editing and non-collaborative single user document production, but
does not describe providing tools to each user of a plurality of users who are
not collaborators and automatically integrating an edit into the text.” Req.
Reh’g. 7. Appellant’s argument is not persuasive because it does not
address the Examiner’s findings, namely, the combination of McNally,
Hood, and Ben-Schachar. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures).
Therefore, we find no error in our affirmance of the Examiner’s
proposed combination of Hood and McNally with Ben-Schachar to reject
claim 16.
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Appeal 2014-002478
Application 13/092,868
Claims 1, 4—6, 9-11, 14, and 15
Second, Appellant reiterates the argument that the Board erred in
finding Hood’s disclosure of a change conditioned on a plurality of votes
being greater than a threshold does not teach automatically integrating an
edit into the text conditioned on a plurality of similar suggested edits being
greater than a threshold. Req. Reh’g 7—9. This argument is not persuasive
as it was fully addressed in our prior communication to Appellant. Req.
Reh’g Dec. 2-4. We remind Appellant that a request for rehearing is not an
opportunity to reiterate arguments presented previously in earlier pleadings
that were fully addressed in an earlier Decision. 37 C.F.R. § 41.52.
CONCLUSION
THEREFORE, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision, but have DENIED it with
respect to making any changes to 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
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