Ex Parte Hankin

Board of Patent Appeals and Interferences

Nov 24, 2009

10697070 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEITH ALAN HANKIN
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Appeal 2009-004117
Application 10/697,070
Technology Center 2100
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Decided: April 20, 2010
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

In a paper filed on January 24, 2010, Appellant requests that we hear
our decision in the opinion dated November 24, 2009, in which we affirmed
Appeal 2009-004117
Application 10/697,070

2
the Examiner’s rejection of various claims under 35 U.S.C. § 102 and a
separate rejection under 35 U.S.C. § 103. 1
At the bottom of page 5 of our prior opinion, we made reference to
what amounts to the Examiner’s initial statement of the rejection under 35
U.S.C. § 102 and to corresponding responsive arguments of the Examiner
directed to the Examiner’s views as to the arguments presented in Brief.
There, we also make special note that the Examiner addressed each of the
major arguments presented by Appellant in the Brief. We concluded that
“[t]aken as a whole, the Answer is persuasive of unpatentability.”
The Request takes the erroneous position that the Board and Examiner
erred by contradicting themselves such that the Examiner was flip-flopping
between contradictory positions. The position is concluded at the top of
page 5 of the Request that it is allegedly clear error to adopt and rely upon
both positions. The Request is addressed to the Examiner’s positions in the
Answer which had gone unrebutted since no Reply Brief had been filed in
this appeal. This argument should have been presented in a Reply Brief. In
such a situation, we will not entertain it now since it was presented in an
untimely manner.
New arguments in a request for rehearing will not be considered. Cf.
Pentax Corp. v. Robinson, 135 F.3d 760, 762 (Fed. Cir. 1998) (citing cases
supporting the proposition that issues not raised before the court are not
addressed on rehearing); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.
Circ. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (BPAI 1982),
aff’d, 714 F.2d 160 (Fed. Cir. 1983) (table)) (“A party cannot wait until after

1 The above-noted panel only recently received this request for decision.
Appeal 2009-004117
Application 10/697,070

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the Board has rendered an adverse decision and then present new arguments
in a request for reconsideration.”).
A statement is made at the top of page 5 of the Request for Hearing
that “[t]he Board may be tempted to find . . . .” The allegation is made in the
topic heading that the Board should not find “Sua Sponte” that the load
balancing information inherently teaches space usage data. It appears to be a
strawman argument, where any arguments of the Examiner’s alleged
improper reliance upon inherency should have been made in the Brief and/or
Reply Brief, the latter of which was not filed.
Lastly, the Request does not recognize that we indicated at page 6 of
the prior opinion that it was the Examiner’s view that representative
independent claim 1 did not expressly recite separate storage spaces to
which first and second sets of data correspond. The Examiner made
significant points at pages 11-13 of the Answer in the responsive arguments
portion of it regarding the lack of express recitations of certain features
argued not to be present in Chinta. From our perspective, representative
independent claim 1 does not necessarily require separate first and second
base usage data in separate first and second database servers. The mere
recitation of a first set and second set etc. does not require an interpretation
that they are separate or otherwise different. We also pointed out at page 6
of our prior decision that “the Examiner’s reliance upon Chinta’s Figure 23
to determine storage space as we noted in Finding of Fact 1 is interpreted to
be clearly applicable to the plural application servers 108 A, 108 B with the
common database 110 in Figures 2A-C.”
Appeal 2009-004117
Application 10/697,070

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In view of foregoing, Appellant’s request for rehearing is granted to
the extent that we have reviewed our findings, but is denied as to making
any change therein.
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).

DENIED

Erc

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