Ex Parte Hepper

Patent Trial and Appeal Board

Sep 6, 2016

13154402 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/154,402 06/06/2011
46320 7590 09/08/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Stefan A. Hepper
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.
RSW920100179US1 (725) 1939
EXAMINER
HARPER, ELIY AH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEFAN A. HEPPER
Appeal2014-009477
Application 13/154,402
Technology Center 2100
Before ROBERT E. NAPPI, JEFFREY A. STEPHENS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(l)
on July 13, 2016 (hereinafter "Request"), requesting that we reconsider our
Decision on Appeal of May 13, 2016 (hereinafter "Decision"), in which we
affirmed the rejection of claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Ramakrishnan (US 2008/0209229 Al; Aug. 28, 2008) in
view of Ramer (US 2009/0234711; Sept. 17, 2009).
ISSUES AND ANALYSIS
Appellant argues that two grounds of rejection in the Decision should
have been designated as a new ground of rejection: (1) the rejection of
claims the rejection of claims 1-20 as unpatentable over Ramakrishnan in
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Application 13/154,402
view of Ramer and (2) the invitation to the Examiner to consider whether
claims 11-17 1 claim unpatentable subject matter and are unpatentable under
35 U.S.C. § 101. Request 5---6.
With regard to the first argument, Appellant contends the Examiner
relied exclusively on Ramer to find a teaching of the "managing user
interactions" limitation recited in claim 1. Request 4 (citing Non-Final Act.
3). Because the Decision relies on the combination of Ramakrishnan and
Ramer, Appellant argues the Decision constitutes a new ground of rejection
pursuant to 37 C.F.R. § 41.50(c). Request 5.
We are not persuaded by Appellant's argument that the affirmance of
the rejection of claims 1-20 as unpatentable over Ramakrishnan in view of
Ramer should have been designated a new ground of rejection. Although
the Examiner noted that Ramakrishnan did not teach or suggest the
"inferring an identity" and the "managing user interactions" limitations
(Non-Final Act. 3), that does not mean that the Examiner relied exclusively
on Ramer. Instead, the Examiner's obviousness findings and conclusions
relied on a combination of the two references:
Ramer however does disclose: disclose Inferring (sic) an identity
of the unidentified user based upon at least a partial matching of
the compared set of data of the particular classification and
known patterns of data of the particular classification and,
managing user interactions of the unidentified user based upon
the inferred identity (See paragraphs 0933-0936 and 1169). It
would have been obvious to an artisan of ordinary skill in the
pertinent at the time the invention was made to have
1 The Request identifies claims 1 and 3-7. However, the Decision recites
claims 11-17 with regard to section 101, not claims 1 and 3-7. We are
treating the identification of claims 1 and 3-7 as a typographical error and
that the Request is directed to claims 11-1 7.
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incorporated the teaching of Ramer into the system of Ram.
The modification would have been obvious because the two
references are concerned with the solution to problem of data
processing, therefore there is an implicit motivation to combine
these references (i.e. motivation from the references themselves).
In other words, the ordinary skilled artisan, during his/her quest
for a solution to the cited problem, would look to the cited
references at the time the invention was made. Consequently,
the ordinary skilled artisan would have been motivated to
combine the cited references since Ramer's teaching would
enable users of the Ram system to have more efficient
processing.
Non-Final Act. 3--4 (emphasis added); see also Ans. 6 (finding
Ramakrishnan teaches "a system that infers which user from a plurality of
users is using a device (See paragraph 0014)."). That combination is
consistent with the Examiner's reliance on In re Keller2 in response to
Appellant arguing Ramer alone and not the combined teaching of the two
relied on references. See Ans. 4.
Consistent with the rationale in the Non-Final Action, the Decision
relied on a combination of interrelated teachings of the references as found
by the Examiner:
We agree with the Examiner that Ramakrishnan teaches
"inferring an identity of the unidentified user ... " as recited in
claim 1. Specifically, Ramakrishnan teaches comparing the
keystroke information with saved information to find the closest
match in order to infer who the unidentified user is.
Ramakrishnan i-fi-f 14, 40 ("This information is used infer the
identity of the user among a collection of users, as described in
greater detail below.") Accordingly, we are not persuaded that
the Examiner erred.
2 642 F.2d 413 (CCPA 1981).
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We are also not persuaded by Appellant's argument that
the Examiner erred in finding the prior art teaches the managing
step as recited in claim 1. The gravamen of Appellant's
argument is that "[t]here is no teaching in Ramer that user
interactions of the unidentified user are managed based upon
the inferred identify." Reply Br. 6; see also App. Br. 9.
However, nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness
is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the
art in light of the combined teachings of those references. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the
combined teachings of Ramer (managing user interactions based
on a user identity) and Ramakrishnan (inferring a user identity)
render obvious the managing user interactions limitation.
Decision 5---6.
Indeed, such a combination of teachings is mandated by the
interrelated nature of the steps recited in claim 1, such as inferring the
identity of the user and then managing the user interactions "based upon the
inferred identity." See App. Br. 14 (Claims App'x). That is, the limitation
at issue - "managing user interactions of the identified user based upon
the inferred identify" - explicitly makes reference to the identified user
that was inferred in the inferring an identity limitation. Id. (emphasis
added). Because the Examiner finds the inferring limitation was taught by
Ramakrishnan (Ans. 6 ("Ram[akrishnan] is a system that infers which user
from a plurality of users is using a device (See paragraph 0014)."), even if
not explicitly stated, it is implicit that the Ramakrishnan finding was used to
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show that the prior art provided the basis for the inferred identity used in the
managing user interactions limitation.
What constitutes a "new ground of rejection" is a highly fact-specific
question. See, e.g., In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976) (finding
no new ground of rejection based upon "facts of this case" and rejecting
other cases as controlling given "distinctive facts at bar"); In re Ahlert, 424
F.2d 1088, 1092 (CCPA 1970) ("[l]ooking at the facts of this case, we are
constrained to hold" that new ground was entered). However, it is generally
not a new ground of rejection, for example, if the Board's decision responds
to appellant's arguments using different language, or restates 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. Kronig, 539 F.2d at
1303; see also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new
ground of rejection made when "explaining to appellants why their
arguments were ineffective to overcome the rejection made by the
examiner"); In re Krammes, 314 F .2d 813, 817 (CCP A 1963) ("It is well
established that mere difference in form of expression of the reasons for
finding claims unpatentable or unobvious over the references does not
amount to reliance on a different ground of rejection."); In re Cowles, 156
F.2d 551, 1241(CCPA1946) (holding that the use of"different language"
does not necessarily trigger a new ground of rejection).
We are not persuaded by Appellant's argument that the Decision
raised a new ground of rejection. As discussed above, the Decision
maintained the same thrust of the rejection from the Non-Final Action and
the Answer while relying on the same sections of the prior art. That is, the
Decisions relied on Ramakrishnan for inferring a user identity and then
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using that teaching combined with the teaching of Ramer for the managing
user interactions limitation.
This is not a case where Appellant did not have a full and fair
opportunity to respond to the rejection. See In re De Blauwe, 736 F.2d 699,
706 n.9 (Fed. Cir. 1984) (stating that where the Office advances "a position
or rationale new to the proceedings, an applicant must be afforded an
opportunity to respond to that position or rationale by submission of
contradicting evidence"). First, the Examiner placed Appellant on notice
that the Appellant was arguing the references individually and not
addressing the combined teachings as applied by the Examiner in the Non-
Final Action. Ans. 4 ("Moreover, the test of obviousness is not whether
features of secondary reference may be bodily incorporated into primary
reference's structure, nor whether claimed invention is expressly suggested
in any one or all of references; rather, test is what combined teachings of
references would have suggested to those of ordinary skill in art.[] In re
Keller, Terry, and Davies, 208 USPQ 871(CCPA1981 ).").
Second, not only did Appellant argue Ramer did not teach or suggest
the inferring or managing limitations, Appellant also argued Ramakrishnan
did not teach or suggest those limitations. App. Br. 10-12.3 Having actually
argued Ramakrishnan does not teach or suggest the inferring or managing
user interactions limitations, Appellant not only had an opportunity to
address the rejection, but Appellant used the opportunity. On this point, we
3 Appellant's argument regarding Ramakrishnan in the Appeal Brief is
inconsistent with Appellant's argument in the Request that the Examiner did
not rely, at least in part, on Ramakrishnan in finding the prior art teaches the
inferring and managing limitations.
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note Appellant has not offered any explanation as to why Appellant argued
Ramakrishnan does not teach or suggest the inferring or managing user
interactions limitations in the Appeal Brief if the Decision was the first time
Ramakrishnan was used to teach those limitations.
We also are not persuaded by Appellant's argument that we should
have designated a new ground of rejection regarding claims 11-17. As was
set forth in the Decision, the Board did not reject claims 11-17 as
unpatentable as directed to non-patentable subject matter. Decision 6 fn. 2.
Instead, we merely invited the Examiner to consider whether the claims
were patent eligible or not. Id. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), it is discretionary, not mandatory and no
inference should be drawn when the Board elects not to do so. See MPEP
1213.02. We exercised our discretion in not entering a rejection.
Accordingly, there is no rejection to be designated as a new ground of
rejection.
CONCLUSION
For the above reasons, Appellant's contentions have not persuaded us
of error in our Decision.
Accordingly, while we have granted Appellant's Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes 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)(l )(iv).
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DENIED
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