Ex Parte Hofmann et al

Patent Trials and Appeals Board

Sep 24, 2014

11863892 - (R) (P.T.A.B. Sep. 24, 2014)

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.
11/863,892 09/28/2007 Markus A. Hofmann 25-2 2503
7590 09/25/2014
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
SIMS, JING F
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
09/25/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARKUS A. HOFMANN and IVICA RIMAC
____________________

Appeal 2012-003202
Application 11/863,892
Technology Center 2400
____________________

Before CAROLYN D. THOMAS, JASON V. MORGAN and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants1 have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 for reconsideration of our Decision on Appeal mailed April 25, 2014
(“Decision”). In that Decision, we affirmed the Examiner’s final rejection of
claims 1-20 under 35 U.S.C. §§ 101, 102(b) and 103(a). We have

1 The Real Party in Interest is Lucent Technologies Inc.
Appeal 2012-003202
Application 11/863,892

2

considered the arguments presented by Appellants in the Request for
Rehearing (“Req. Reh’g”), but we are not persuaded that any points were
misapprehended or overlooked by the Board in issuing the Decision. We
have provided herein additional clarification in further support of our
decision, but decline to change our decision in view of Appellants’
arguments.
ANALYSIS
37 C.F.R. § 41.52 states in relevant part:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked
by the Board. 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) [i.e., based upon a recent
relevant decision of either the Board or a Federal Court]
through (a)(4) [i.e., responding to a new ground of rejection
made pursuant to § 41.50(b)] of this section.

37 C.F.R. § 41.52(a)(1).
The standard for rehearing is whether the Board has misapprehended
or overlooked any points or arguments raised by Appellants. In this case,
Appellants do not request a rehearing of our Decision to affirm the
Examiner’s final rejection of: (1) claim 20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter; (2) claims 1-3, 5-8, 10-16, and 18-
20 under 35 U.S.C. § 102(b) as being anticipated by Bergstrand (WO 2002/
01864 A1); and (3) claims 4, 9, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Bergstrand and Hamid (US Publication No. 2008/0066176
A1). Decision 4-12. Rather, Appellants request a rehearing of our Decision
only with respect to the rejection of dependent claims 8 and 16 under 35
Appeal 2012-003202
Application 11/863,892

3

U.S.C. § 102(b) as being anticipated by Bergstrand. Req. Reh’g 1. In
particular, Appellants allege the Board inadvertently overlooked Appellants’
separate patentability arguments presented in their Briefs with respect to
dependent claims 8 and 16. Req. Reh’g at 2. According to Appellants,
Bergstrand does not disclose or suggest the limitation: “wherein said
authorization message is provided to said authorizing user on a device where
said authorizing user is present,” as recited in dependent claims 8 and 16.
Id. at 3.
At the outset, we note that the Board has not overlooked any
arguments raised by Appellants with respect to dependent claims 8 and 16.
Claim 8 and 16 further recite “wherein said authorization message is
provided to said authorizing user on a device where said authorizing user is
present.” However, the limitation of claims 8 and 16 is similar to the feature
that was already considered in context of independent claims 1, 12, and 20,
i.e., “transmitting an authorization message to said identified device where
said authorizing user is present, wherein said authorizing user is remote from
a location of said end-user.” App. Br. 10 (Claims Appendix). As a result,
the Examiner considered Appellants’ argument for patentability of claims 8
and 16 as the same as “the argument to claims 1, 12, and 14 [sic, 20],” and,
as such, “the response to [that] argument is same as the response to claims 1,
12, and 14 [sic, 20].” Ans. 16. We agreed with the Examiner. Decision 7-
11.
Nevertheless, in the interest of completeness, we address Appellants’
arguments raised in the Rehearing Request as follows:
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Appeal 2012-003202
Application 11/863,892

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(e.g., child), via a receiver decoder, i.e., set-top box 40, and then forward the
request (i.e., Appellants’ claimed “authorization message”) to an authorizing
user (e.g., parent) by way of a phone call or an SMS message, via the
authorizing user’s mobile phone, at a remote location, for approval. See
Bergstrand, 3:5-8, 15-16; 7:11-31; 10:19-29; 11:3-4, 14-16; and Claim 1.
Once such a request (i.e., Appellants’ claimed “authorization message”) is
received and approved by the authorizing user (e.g., parent), that
“authorization message is provided to said authorizing user on a device
where the authorizing user is present,” as further recited in dependent claims
6 and 20. This way a parent can control access to restricted content from a
remote location. Id. (emphasis added).

CONCLUSION
We have considered the arguments raised by Appellants in the
Request, but find none of these arguments persuasive that our original
Decision overlooked any points raised by Appellants resulting in error. It is
our view that Appellants have not identified any points that the Board has
overlooked. We have reconsidered our Decision but decline to grant the
relief requested. This Decision on Appellants’ “Request for Rehearing” is
deemed to incorporate our earlier Decision by reference. See 37 C.F.R.
§ 41.52(a)(1).

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, and modified the Decision to further clarify our
Appeal 2012-003202
Application 11/863,892

6

rationale for affirming the Examiner’s rejections. However, we deny the
request with respect to making any changes to the outcome of the Decision.
We thus reiterate that the Examiner’s decision rejecting: (1) claim 20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter; (2) claims
1-3, 5-8, 10-16, and 18-20 under 35 U.S.C. § 102(b) as being anticipated by
Bergstrand; and (3) claims 4, 9, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Bergstrand and Hamid, remains AFFIRMED.
Requests for extensions of time are governed by 37 C.F.R. § 41.52(b).

REHEARING GRANTED-IN-PART

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