Ex Parte Hay et al

Patent Trial and Appeal Board

Oct 11, 2017

14487405 (P.T.A.B. Oct. 11, 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.
14/487,405 09/16/2014 Roee Hay IL920120058US3_8150-0512 3521
73109 7590 01/26/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
WALIULLAH, MOHAMMED
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROEE HAY, DANIEL KALMAN,
ROI SALTZMAN, and OMER TRIPP
Appeal 2017-002675
Application 14/487,4051
Technology Center 2400
Before LARRY J. HUME, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing of our
Decision on Appeal mailed October 13, 2017.
We reconsider our Decision in light of Appellants' Request, but
decline to change the decision for the reasons provided, infra.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
Appeal 2017-002675
Application 14/487,405
BACKGROUND2
Appellants have filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claims 1—20
under § 101 as being directed to patent-ineligible subject matter.3 Request 2.
APPELLANTS' ARGUMENTS
Appellants contend "[t]he Examiner's Answer contained new
arguments raising additional issues. The Reply Brief presents rebuttals to
those new arguments. Thus, the Reply Brief is 'responsive to an argument
raised in the examiner's answer.' Accordingly, the Board should consider the
arguments presented in the Reply Brief."4 Id.
Further, Appellants quote a portion of our Decision on pages 15 and
16 which states, in pertinent part, "[t]o the extent Appellants may advance
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
May 12, 2016); Reply Brief ("Reply Br.," filed Dec. 6, 2016); Request for
Reconsideration ("Request," filed Dec. 12, 2017); Examiner's Answer
("Ans.," mailed Oct. 6, 2016); Final Office Action ("Final Act.," mailed
Dec. 31, 2015); our Decision on Appeal ("Decision," mailed Oct. 13, 2017);
and the original Specification ("Spec.," filed Sept. 16, 2014).
3 "Appellants respectfully submit that in the Decision on Appeal, the
Honorable Board either misapprehended and/or overlooked certain
arguments presented by Appellants in the Reply Brief of Dec. 6, 2016
(hereinafter 'Reply Brief)." Request 1.
4 We note Appellants characterize the Examiner's findings as "arguments."
We point out the Board, as well as Examiners, make findings of fact, reach
conclusions of law, and make decisions regarding the exercise of discretion,
but do not make "arguments," "contentions," "admissions," or "concessions,"
because neither the Examiner nor the Board are parties in any ex parte
proceeding. As our reviewing court stated, "[pjatent examiners are quasi­
judicial officials" and therefore do not make admissions, but rather make
findings of fact and conclusions based on their factual findings. W. Elec. Co.
v. Piezo Tech., Inc., 860 F.2d 428, 431 (Fed. Cir. 1988).
2
Appeal 2017-002675
Application 14/487,405
new arguments in the Reply Brief. . . not in response to a shift in the
Examiner's position." Id. (emphasis added).
Appellants conclude their Request by pointing out portions of the
Answer (see Ans. 42-48) in which the Examiner discusses the Fortier and
Wooten references in a manner that represents new positions being taken in
rejecting claims 1, 3, 13, and 20, allegedly different from the Final Action.
Request 2—6.
RESPONSE TO ARGUMENTS
We have only considered those timely arguments actually made by
Appellants in deciding this Request. See 37 C.F.R. § 41.52(a)(1)
("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.").
We have not misapprehended the Examiner's rejection in our
Decision, nor have we overlooked any of Appellants' arguments in the briefs.
Furthermore, Appellants do not specifically identify which one(s) of the six
Rejections R1 through R6 (see Decision 4) they believe were affirmed in
error, but it appears their contentions are directed to Rejection R4 of claims
1—3, 5, 10—13, 15, 18—20, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fortier and Wootton. See Final Act.
19, 39; Ans. 2, 18, 36; Decision 4.
We first note that our Decision does not identify any specific
arguments as untimely, nor did we exclude any of Appellants' arguments
from consideration in reaching our ultimate Decision and its legal
conclusions. Further, we disagree with Appellants' contention that we did
3
Appeal 2017-002675
Application 14/487,405
not consider all arguments presented, including those found in the Reply
Brief. In fact, our Decision specifically stated, "[i]n reaching this decision,
we consider all evidence presented and all arguments actually made by
Appellants." Decision 5 (emphasis added). We further point out that we
found Appellants' arguments in the Reply Brief to be unpersuasive, and
similarly find arguments in the Request to also be unpersuasive. See
Decision 13, 15.
Appellants point out purported differences in the Examiner's findings
between the Final Action and the Answer. See Request 2—6. However, we
find the Examiner merely provided additional support for the rejection in the
Answer in response to Appellants' arguments in the Appeal Brief. See
Ans. 18 et seq. The Examiner may respond to Appellants' arguments using
different language, or restating the reasoning of the rejection in a different
way, so long as the evidence relied upon is the same and the "basic thrust of
the rejection" is the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA
1976). In particular, citing to a different portion of an applied reference,
which "goes no farther than, and merely elaborates upon, what is taught by"
the previously cited portion of that reference relied upon by the Examiner,
which we find the Examiner has done, does not constitute a new ground of
rejection. See In re DBC, 545 F.3d 1373, 1382 n.5 (Fed. Cir. 2008).
Therefore, based upon the findings and legal conclusions above, and
on this record, we are not persuaded of error in the Examiner's findings and
legal conclusions, or in our Decision to affirm the Examiner's rejection.
4
Appeal 2017-002675
Application 14/487,405
CONCLUSION
We have considered all of the arguments timely raised by Appellants
in the Request. Nonetheless, Appellants have not persuasively shown we
misapprehended or overlooked any points regarding the Examiner's
rejection, or that our Decision should otherwise be modified. For the
aforementioned reasons, Appellants' contentions have not persuaded us of
error in our Decision.
DECISION
Accordingly, while we have granted Appellants' Request to the extent
that we have reconsidered our Decision, that request is denied with respect
to making any changes therein. Our decision is final for purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
REQUEST FOR REHEARING DENIED
5