Ex Parte Huber et al

Patent Trial and Appeal Board

Aug 23, 2016

11618424 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111618,424 12/29/2006
23460 7590 08/25/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Chester A. Huber
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.
256041 5793
EXAMINER
NGUYEN, CHUONG P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHESTER A. HUBER, NEBOJSA NEDELJKOVIC,
RICHARD A. JOHNSON, and LAURENCE J. TRETY AK
Appeal2014-001083
Application 11/618,424
Technology Center 3600
Before JILL D. HILL, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Chester A. Huber et al. (Appellants) filed a Request for Rehearing on
August 1, 2016 (hereinafter "Request"), seeking reconsideration of our
Decision mailed May 31, 2016 (hereinafter "Decision"), in which we
affirmed the Examiner's decision to reject claims 1 and 4-10. We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
We do not modify our decision.
ANALYSIS
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 3 7
C.F.R. § 41.52(a)(l); see also Ex parte Quist, 95 USPQ2d 1140, 1141
Appeal2014-001083
Application 11/618,424
(BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure
(MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash
arguments originally made in the Brief, neither is it an opportunity to merely
express disagreement with a decision. It may not raise new arguments or
present new evidence except as permitted by 37 C.F.R. § 41.52(a)(2) though
(a)(4). Id.
In a request for rehearing, Appellants are required to "state with
particularity the points believed to have been misapprehended or
overlooked by the [Patent Trial and Appeal] Board." See 37 C.F.R.
§ 41.52(a)(l). However, the pending Request for Rehearing does not
explicitly identify any such points. Instead, Appellants first rephrase a
prior argument, contending that "Whitman, modified in view of Kim's
teachings, would merely describe providing a current position of a
pedestrian carrying a GPS enabled device-not a GPS equipped
telematics unit for a vehicle." Request 5; compare id., with Appeal
Br. 7-8, and Decision 4---6 (addressing this prior argument).
However, as explained in our Decision, the Examiner relied
upon Whitman because it "discloses ... a method of providing a
packaged tour," while relying on Kim for disclosing "a portable
terminal (i.e. reads on the telematics unit) which detects its current
position from GPS and transmits its current position to a guidance of
[a] sightseeing server," before concluding that "[n]onobviousness
cannot be established by attacking references individually when the
rejection is predicated upon a combination of prior art disclosures."
See Decision 5---6.
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Appeal2014-001083
Application 11/618,424
Appellants also contend that "[t]he Decision, at page 7, raises for the
first time a challenge to support for Appellants' claimed vehicle-based
telematics unit," which "is completely absent in Kim that unequivocally
describes providing information associated with a pedestrian's current
location." Request 5. However, Appellants misread page 7 of our Decision,
where we merely pointed out that Appellants' Specification did not preclude
"the Examiner from construing 'associated with a vehicle' to include the
disclosure in Whitman [not Kim] of 'a portable electronic system which can
be used in an automobile."'
Appellants also rephrase another prior argument, contending that "the
Decision does not provide a proper reason for modifying Whitman, in view
of Kim, in a way that would result in Appellants' claimed 'starting point'
calculated based on GPS data from the user's telematics unit." Request 6;
compare id., with Reply Br. 4--5. In our Decision, we addressed this prior
argument, pointing out that "we agree with the Examiner that 'one of
ordinary skill in the art would find it obvious to combine Whitman and Kim
et al for requesting and receiving a packaged tour based on the portable
device current location wherein the portable device is associated with a
vehicle.'" Decision 7 (citing Ans. 10-11 ).
DECISION
Appellants' Request for Rehearing has not persuaded us that
our Decision misapprehended or overlooked any points of law or fact
in sustaining the Examiner's rejection of claims 1 and 4--10. Insofar
as we have addressed Appellants' arguments herein, Appellants'
Request for Rehearing is granted. In all other respects, Appellants'
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Appeal2014-001083
Application 11/618,424
Request for Rehearing is denied. This Decision on Appellants'
Request for Rehearing is deemed to incorporate our earlier Decision
(mailed May 31, 2016) by reference. See 37 C.F.R. § 41.52(a)(l).
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).
DENIED
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