Ex Parte Goldman

Board of Patent Appeals and Interferences

Feb 13, 2012

09978959 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NEAL D. GOLDMAN
___________

Appeal 2010-009550
Application 09/978,959
Technology Center 3600
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Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 Our decision will make reference to the Appellant’s Request for Rehearing
(filed Jan. 23, 2012, “Request”), the BPAI Decision (mailed Nov. 23, 2011,
“Decision”), and the Appeal Brief (filed Jun. 23, 2008, “App. Br.”).
Appeal 2010-009550
Application 09/978,959

2
STATEMENT OF THE CASE
Neal D. Goldman (Appellant) filed a Request for Rehearing of the
Decision affirming the rejection of claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Durand, NVST, and Official Notice.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes
certain points, in particular, that the Appellant believes the Board
misapprehended or overlooked in reaching its Decision. The Appellant
argues that the Board misapprehended or overlooked the adequacy of the
Appellant’s traversal of the of the Examiner’s Official Notice that “raising
the score to a power that is representative of said depth of said hierarchical
structure is a method of choice and well known in the art” (Ans. 5). Request
1-3.
We have reviewed the Request in its entirety but do not find that the
Appellant has shown that the Board misapprehended or overlooked points in
affirming the rejection of claim 7 under 35 U.S.C. § 103(a).

DISCUSSION
The Appellant argues that our decision was incorrect in finding that
the Appellant’s traversal of the Official Notice taken by the Examiner in
rejecting claim 7 was inadequate because “[A]ppellants specifically pointed
out that the Examiner has cited no proof that [Official Notice] is well-known
in the art and specifically request the Examiner’s evidence.” Request 2.
The Appellant did traverse the Examiner's taking of Official Notice in
the Appeal Brief. App. Br. 6-7. However, as we stated on page 8 of the
Decision:
Appeal 2010-009550
Application 09/978,959
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The Appellant’s arguments and comments do not
appear to constitute an adequate traverse because
the Appellant has not specifically pointed out the
supposed errors in the examiner’s action, which
would include stating why the noticed fact is not
considered to be common knowledge or well-
known in the art. 37 CFR § 1.104(d)(2), MPEP
§ 707.07(a). An adequate traverse must contain
adequate information or argument to create on its
face a reasonable doubt regarding the
circumstances justifying Examiner’s notice of
what is well known to one of ordinary skill in the
art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
(emphasis added).
The Appellant requested that the Examiner provide evidence of the
fact and denied that “this specific scoring scheme is well known in the
context of matching algorithms for identifying potential targets for a
business transaction.” See App. Br. 6-7. However, this does not challenged
the fact (i.e. that raising the score to a power that is representative of said
depth of said hierarchical structure is a method of choice and well known in
the art) or state why the noticed fact is not considered to be common
knowledge or well-known in the art.
We find the Appellant’s argument unpersuasive to demonstrate that
we misapprehended or overlooked points in affirming the Examiner’s
rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Durand, NVST, and Official Notice.

CONCLUSION
We have carefully considered the arguments that the Appellant has set
forth in the Request but, for the foregoing reasons, we do not find them
persuasive to demonstrate that we misapprehended or overlooked points in
Appeal 2010-009550
Application 09/978,959
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our affirmance of the rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Durand, NVST, and Official Notice.

DENIED

MP