Ex Parte Hallowell et al

Board of Patent Appeals and Interferences

Aug 26, 2012

10256818 (B.P.A.I. Aug. 26, 2012)

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.
10/256,818 09/27/2002 Curtis W. Hallowell 247171-000357USPT 4881
41230 7590 08/27/2012
CUMMINS-ALLISON CORP.
C/O NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
08/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CURTIS W. HALLOWELL and ROBERT J. KLEIN
____________________

Appeal 2010-004000
Application 10/256,818
Technology Center 3600
____________________

Before: JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-004000
Application 10/256,818

2
STATEMENT OF THE CASE
Appellants filed a request for rehearing, received July 20, 2012
(hereinafter “Request” or “Req.”), in response to our decision mailed May
23, 2012 (hereinafter “Decision” or “Dec.”). In the Decision, we reversed
the Examiner’s rejection of claims 53-56. We affirmed the Examiner’s
rejections of claims 1-4, 6-20, 22-24, 26, 27, 34-37, 39-52, and 57-62.

Did the Board Err in Grouping Claims?
Appellants correctly note that we reversed the Examiner’s decision
regarding claims 53-56 (“Group IV1”) and affirmed the Examiner’s decision
regarding claims 8, 27, and 41 (“Group II”). Req. 1-2. In the Decision, we
found Appellants’ arguments persuasive of error in the rejection of the
claims of Group IV (Dec. 5-7) but noted that Appellants did not set forth any
separate arguments for the claims of Group II (Dec. 3). Accordingly, we
grouped the claims of Group II as standing or falling with claim 1 pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(iv). See Dec. 3.
Appellants now argue that the Decision was in error for not reversing
the rejection of the Group II claims because Appellants allege that the claims
of Group II were argued alongside those of Group IV in the Reply Brief,
pages 9-11. Req. 3.
In the Appeal Brief, page 35, Appellants argued that “dependent
claims 2-4, 6-15, 17-20, 22-24, 26, 27, 35-37, 39-41, 44-46, 48-52, and 58-
62 are not obvious in view of the Stieber Published Application, Urata, or
the combination thereof for at least the same reasons discussed with respect

1 We note that the use of the word “group” in this context is with respect to
how the claims were identified by Appellants and not an indication of
whether we consider the claims to stand or fall together.
Appeal 2010-004000
Application 10/256,818

3
to claims 1, 16, 34, 42, 43, 47, and 57” (emphasis added). Accordingly, the
claims of Group II (8, 27, and 41) were explicitly argued as a group with
claim 1 and thus properly grouped with claim 1 under 37 C.F.R.
§ 41.37(c)(1)(iv). When Appellants argued the claims of Group II alongside
those of Group IV, they did so for the first time in the Reply Brief and did
not indicate why such a late argument had good cause. The Board does not
typically entertain belated arguments.
Nevertheless, in the event of further prosecution, Appellants’
arguments with respect to claims 53-56 would be persuasive with respect to
claims 8, 27, and 41 because of the similar substitute currency media subject
matter. Accordingly, in the interest of efficiency, we amend the Decision to
reverse the Examiner’s decision to reject claims 8, 27, and 41 as
unpatentable over Stieber and Urata.
However, we note that, contrary to Appellants’ statements on page 2
of the Request, the Board did not find claims 53-56 allowable. A reversal of
a rejection is not an indication, or even a suggestion, that the claims
previously subject to that rejection are allowable. A decision to allow a
claim or to set forth a further rejection is within the discretion of the primary
examiner and that examiner may reopen prosecution upon a showing of
sufficient cause, such as unpatentability. See 37 C.F.R. § 1.198; see also In
re Voss, 557 F.2d 812, n. 11 (CCPA 1977) (“reversal is not a mandate to the
PTO to issue a patent and does not preclude the PTO from reopening
prosecution”)2.

2 The issue in Voss was whether the Board had authority to review an
examiner’s decision to reopen prosecution. Voss at 816. The CCPA
determined that the Board did not have such authority, and thus cannot
prevent an examiner from reopening prosecution. See id. Accordingly, a
Appeal 2010-004000
Application 10/256,818

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In addition, we note that, contrary to Appellants’ statements, the Board
did not find the claims 53-56 allowable in view of Munro, Izawa, or Ex
parte Jones. Req. 2 (citing Dec. 7). First, as we noted above, the Board
does not indicate whether claims are allowable. Second, our statements in
the Decision indicated that systems that processes substitute currency were
known in the art. In the Decision, we did not sustain the Examiner’s finding
that Urata discloses a system that processes substitute currency. Dec. 7.
However, we noted that the Examiner did not make a rejection in view of
Munro (US 5,790,697, iss. Aug. 4, 1998) or Izawa (US 5,420,406, iss. May
30, 1995), which we found in Ex parte Jones, No. 2010-002640 (BPAI
2011),3 to teach systems for processing substitute currency. To put it more
clearly, in the event of further prosecution of the application 10/256,818, the
Examiner and Appellants may wish to consider the holding of Jones and the
teachings of Munro and Izawa.

reversal is not mandate for issuance. 35 U.S.C. § 6 (the authority of the
Board is limited to review of decisions); In re Borkowski, 505 F.2d 713, 718
(CCPA 1974) (the Board may not force the granting of patents on inventions
that do not comply with the statutes); see also In re Fisher, 448 F.2d 1406,
1407 (CCPA 1971) (“the Patent Office can always reopen prosecution” “we
pass only on rejections actually made and do not decree the issuance of
patents”).
3 The inventors of the present application on appeal are listed inventors in
the application on appeal in Jones. The present counsel was counsel for the
appeal in Jones. The Examiner of the present application was the Examiner
of the Jones application. The effective filing date of the present application
is later than the effective filing date of the Jones application.
Appeal 2010-004000
Application 10/256,818

5
Did the Board Err in Finding Appellants’ Arguments with Respect to the
Giacomini Issue Uncompelling?
Appellants argue that the Board “side-stepped” the “issue” relating to
the Stieber published application and the Examiner’s reliance on the
effective filing date of that application. Req. 4-8. Appellants’ argument is
unconvincing.
First, we note that the Examiner did not set forth any rejection relying
on the Stieber provisional application. Instead, the Examiner relies on the
effective filing date of the Stieber published application (US 2002/0100660
A1). Relying on an effective filing date is not the same as relying on an
earlier-filed reference. See 35 U.S.C. § 119(e)(1) (an application filed under
§ 111(a) disclosed in a provisional application under § 111(b) “shall have the
same effect … as though filed on the date of the provisional application”).
As such, Appellants’ argument that reliance on Stieber’s effective filing date
requires a new ground of rejection is unavailing. Even if there were an issue
as to whether the Examiner made a proper new ground of rejection, the
Board does not review petitionable matters. See In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
Next, Appellants correctly point out that the Stieber application is
only entitled to the effective filing date of December 4, 2000 (i.e., the
provisional filing date) if the portions relied on in the Stieber published
application have written description support in the provisional application.
See Req. 5 (citing In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)
(“An important limitation is that the provisional application must provide
written description support for the claimed invention.”). Appellants stop
there, however, and do not allege any particular error in the Examiner’s
Appeal 2010-004000
Application 10/256,818

6
rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
naked assertion that the corresponding elements were not found in the prior
art).
To the extent Appellants are suggesting (see, e.g., Req. 5) that a prima
facie case of obviousness requires the Examiner to provide an element-by-
element analysis of how each limitation is supported by the provisional
application, we note that an examiner is not required to preempt every
possible response to a rejection. As laid out in 35 U.S.C. § 132(a), the
Examiner’s burden is to state the “reasons for such rejection … together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of his application.” The Examiner in
this case has clearly identified the reference relied upon (Stieber) and has
explained, in detail, those features of Stieber relied upon to satisfy the
relevant claim limitations. Ans. 3. At this point, it is Appellants’ burden to
identify the error in the Examiner’s rejection. See In re Dillon, 919 F.2d
688, 692 (Fed. Cir. 1990) (if a prima facie case of obviousness is established,
the burden shifts to the applicant to come forward with arguments and/or
evidence to rebut the prima facie case); Jung, 637 F.3d at 1365; Lovin, 652
F.3d at 1357.4

4 The theory Appellants raise here is analogous to the theory that an
Examiner must demonstrate that a prior art reference is enabled to satisfy a
prima facie case. That theory has been rejected because a prima facie case is
not so exhaustive. In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (while 35
Appeal 2010-004000
Application 10/256,818

7
DECISION
Appellants’ Request is granted to the extent that we amend the
Decision to reverse the Examiner’s decision to reject claims 8, 27, and 41 as
unpatentable over Stieber and Urata.
Appellants’ Request is denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

GRANTED-IN-PART

hh

U.S.C. § 102(b) requires a reference to be enabled, it is applicant’s burden to
demonstrate non-enablement) (discussed further in In re Antor Media Corp.,
No. 2011-1465 slip op. at 6-10 (Fed. Cir. July 27, 2012) (explaining the
basis for the Sasse rule stems from 35 U.S.C. § 132(a), prima facie case, not
§ 282, presumption of validity of issued patents, and thus the Sasse rule
applies equally as well to published patent applications)).