Ex Parte Hallowell et al

Patent Trial and Appeal Board

Aug 25, 2016

13050622 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/050,622 03/17/2011 Scott Hallowell
29855 7590 08/29/2016
Blank Rome LLP
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.
199-0780US 2973
EXAMINER
717 Texas A venue, Suite 1400 JUSTUS, RALPH H
Houston, TX 77002
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT HALLOWELL,
CHRIS DURAND, and JOHN BAHR
Appeal2014-009089
Application 13/050,622
Technology Center 2600
Before THU A. DANG, ERIC S. FRAHM, and
CARLL. SILVERMAN, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2014-009089
Application 13/050,622
I. STATEivIENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (hereinafter "Request") on July 20, 2016 for reconsideration of our
affirmance of the Examiner's rejection of claim 1 (Request 7), and claims
6, 15, and 20 (Request 13) in a Decision mailed June 1, 2016 (hereinafter
"Decision").
The Decision affirmed the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1, 3, 6, 8, 11-13, 20, 21, and 25-27 over Moloney and
Rautiola; of claims 4, 9, and 15-18 over Moloney, Rautiola, and Liu; of
claims 5, 10, and 22 over Moloney, Rautio la, and Brown; of claims 14 and
19 over Moloney and Liu; of claim 23 over Moloney, Rautiola, and
Miyabayashi; and of claim 24 over Moloney, Rautiola, and Ullah.
We have reconsidered our Decision regarding claim 1, 6, 15, and 20
in light of Appellants' comments in the Request (Request 7-13). We grant
the Rehearing Request to the extent that we consider the Appellants'
arguments infra, but DENY the request to modify the Decision. As noted
infra, we maintain our affirmance of the Examiner's rejection of claims 1, 6,
15, and 20. We are still of the view that the invention set forth in claims 1,
6, 15, and 20 would have been obvious in view of the teachings and
suggestions of Moloney and Rautiola 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)(l).
II. ISSUE
The issue we address on this Request is whether Appellants have
identified that the Board misapplied the relevant law or misapprehended
Appellants' arguments set forth in the Appeal Brief in finding no error with
2
Appeal2014-009089
Application 13/050,622
the Examiner's finding that the combination of ivioloney and Rautiola
teaches or would have suggested accessing "virtual BT parameters
associated with the identified second BT device" (claim 1, emphasis added).
III. ANALYSIS
To the extent that any of Appellants' arguments in the Request were
not previously set forth in the Appeal Brief, it is inappropriate for Appellants
to discuss for the first time in a Request for Rehearing matters that could
have been raised in the Appeal Brief. As the Board has found, "[ t ]he failure
to raise all issues and arguments diligently, in a timely fashion, has
consequences," and thus, such newly-raised arguments are technically
waived. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision). Cf Kaufman Company v. Lantech, Inc., 807 F.2d
970, 973 (Fed. Cir. 1986) and McBride v. Merrell Dow and Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986). See also 37 C.F.R. §41.52 (a)(l):
Rehearing ... "Arguments not raised, and Evidence not previously relied
upon, pursuant to§§ 41.37, 41.41, or 41.47 are not permitted in the request
for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this
section .... "
In the Request, although Appellants concede, "Moloney discloses BT
parameters," Appellants contend "Moloney, does not, however, disclose
virtual BT parameters" because they are "actual, physical parameters"
(Request 9). Thus, Appellants contend "[b ]ecause Moloney does not teach
virtual BT parameters, and for other reasons, Moloney does not teach the
first device adopting the first virtual BT device address" (id. at 11 ).
Further, Appellants contend "Rautiola is completely silent on any
details of the Bluetooth connection between the user terminal 137, 138 and
3
Appeal2014-009089
Application 13/050,622
the VivIS 139" (id. at 12), and therefore "Rautiola does not disclose virtual
BT parameters or their use" (id.). However, Appellants concede, "Rautio la
does disclose Bluetooth signaling and does have Bluetooth being used" (id.).
We note Appellants' contentions are directed to what Moloney or
Rautiola do not separately "teach" or "disclose" (Request 9-12). However,
as we pointed out in our prior Decision, "the test for obviousness is not what
the references show individually but what the combined teachings would
have suggested to one of ordinary skill in the art" (Decision 9, emphasis
added). Thus, even if we assume arguendo that "Moloney, does not,
however, disclose virtual BT parameters" because they are "actual, physical
parameters" (Request 9), and that "Rautiola does not disclose virtual BT
parameters or their use" (id. at 12), as set forth in our Decision, "we agree
with the Examiner's finding that the combination of Moloney and Rautio la
discloses or at least suggests 'virtual BT parameters' as claimed" (Decision
9). That is, we found no error in the Examiner's reliance on Moloney for
disclosing and suggesting "BT parameters" used in BT communications, and
on Rautio la for disclosing and suggesting the use of "virtual" parameters,
such as virtual BT parameters (id.).
Furthermore, as we noted in our prior Decision, "claim 1 merely
defines the claim term 'virtual BT parameters' as 'includ[ing] a first virtual
BT device address and a first secret key"' wherein "Appellants'
Specification merely 'describes a virtual device as ... including a set of
parameters with corresponding values used by another device to establish a
Bluetooth connection,' wherein a 'parameter[] of the virtual Bluetooth
device can include a secret key, or a link key"' (Decision 8). Accordingly,
as set forth in our Decision, "we do not find the Examiner's interpretation of
4
Appeal2014-009089
Application 13/050,622
the claim term 'virtual BT parameters' as encompassing 'Bluetooth device
address, a PIN, a Bluetooth link key, and a public key' to be overly broad or
unreasonable" (id.).
Based on the record before us, we are still of the view that the
Examiner did not errr in finding that "the combination of Moloney and
Rautio la discloses or at least suggests 'virtual BT parameters' as claimed"
(Decision 9). That is, on this record, Appellants have not identified that the
Board has misapplied the relevant law or misapprehended Appellants'
arguments. We therefore maintain our affirmance of the Examiner's
rejection of claims 1, 6, 15, and 20 as being obvious over Moloney and
Rautiola under 35 U.S.C. § 103(a).
IV. CONCLUSION AND DECISION
We have considered the arguments raised by Appellants in the
Request for Rehearing. Although, we have considered our prior Decision in
light of the Request for Rehearing, we decline to modify our prior Decision
in any respect.
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).
REHEARING DENIED
5