Ex Parte Iliff

Board of Patent Appeals and Interferences

Aug 9, 2010

09785044 (B.P.A.I. Aug. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWIN C. ILIFF
____________________

Appeal 2009-004403
Application 09/785,044
Technology Center 2100
____________________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
JOHN A. JEFFERY, LANCE LEONARD BARRY, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on May 24, 2010, for reconsideration
of the Decision mailed March 23, 2010 (hereinafter “Decision”) with respect
to claim 6 (Request 1).
The Decision affirmed the Examiner’s rejections of claims 6-10, 20-
42, and 49-51 under 35 U.S.C. § 101, of claims 6-9, 20-27, 29-38, 40-42,
and 49-51 under 35 U.S.C. § 102(b), and of claims 1-5, 10-19, 28, 39, 43-48,
and 52 under 35 U.S.C. § 103(a). The Request only addresses the
affirmance of the rejection of claim 6 under 35 U.S.C. § 102(b) over Iliff,
and thus, the affirmance of the other rejections, including the rejection of
claim 6 under 35 U.S.C. § 101, is not the subject of this Request (Request 1-
8).
We have reconsidered the panel’s Decision of March 23, 2010
regarding claim 6 under 35 U.S.C. § 102(b) over Iliff, in light of Appellant’s
comments in the Request, and we find Appellant has not identified any
points misapprehended or overlooked by the Board in the Decision to affirm
the rejection of claim 6 under 35 U.S.C. § 102(b). We decline to change the
Decision for the reasons discussed infra.

II. ISSUE
The issue we address on this Request is whether Appellant has
identified any points misapprehended or overlooked by the Board in holding
claim 6 anticipated by Iliff.
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Final Office Action
1. In the Final Office Action, the Examiner found that Iliff discloses
diagnostic objects because “each diagnosis [is] associated with
symptoms in MDATA system” and “the MDATA system is written in
object-oriented program language, such as C++” (Fin. Rej. 5).
Appeal Brief
2. In the Appeal Brief, Appellant merely stated that “[p]rogramming in
an object oriented language such as C++ is a general technological
tool that is different than precisely specifying the diagnostic objects
recited in Claims[sic] 6” without explaining as to why it is different
(App. Br. 18).
Examiner’s Answer
3. In the Examiner’s Answer, the Examiner repeated that Iliff discloses
diagnostic objects because “each diagnosis [is] associated with
symptoms in MDATA system” and “the MDATA system is written in
object-oriented program language, such as C++” (Ans. 11), and
pointed out that Appellant “failed to clarify how prior art C/C++
object oriented language tool is different from instant application
object oriented language in specifying diagnostic objects recited in the
claim 6” (Ans. 24).
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Reply Brief
4. In the Reply Brief, the Appellant added the argument that, since the
Specification defines the term “object,” “Iliff does not disclose the
object implementation as defined by Appellant” (Reply. Br. 6-7).

IV. ANALYSIS
We note that Appellant does not request reconsideration of our
affirmance of the Examiner’s rejection of claim 6 under 35 U.S.C. § 101.
Accordingly, we still find claim 6 unpatentable under 35 U.S.C. § 101,
wherein Appellant has not identified any points misapprehended or
overlooked by the Board in the Decision concerning this rejection.
Though Appellant does not request reconsideration of the finding of
unpatentability of claim 6, we will nevertheless address the points set forth
in the Request.
In the Request, Appellant contends that “[s]ince the arguments
entitled Iliff Does not Disclose the Particular Objects of Claim 6 and Their
Interaction (pages 6-8) was indeed raised in a reply brief, it cannot be
subject to waiver” (Request 2). We agree with Appellant that 37 CFR
§ 41.37(c)(1)(vii)(2004) states that any argument “not included in the brief
or a reply brief filed pursuant to 41.41 will be refused consideration by the
Board…” (Request 2; emphasis added); however, as we set forth in our
Decision, it is inappropriate for Appellant to discuss for the first time in the
Reply Brief matters that could have been raised in the Appeal Brief
(Decision 14). That is, “[t]he failure to raise all issues and arguments
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diligently, in a timely fashion, has consequences,” and thus, such newly-
raised arguments are technically waived. Ex parte Borden, 93 USPQ2d
1473, 1475 (BPAI 2010) (informative decision) (“[The reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.”). Cf.
Kaufman Company v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986)
and McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C.
Cir. 1986).
In the Final Rejection, the Examiner found that Iliff discloses
diagnostic objects because Iliff discloses diagnosis in a MDATA system that
is written in object-oriented C++ language (FF 1). Appellant attempted to
distinguish Iliff by stating, in the Appeal Brief, that programming in C++ is
different than specifying the diagnostic objects recited in claim 6 (FF 2).
Appellant, however, provided no explanation as to how or why specifying
the diagnostic objects is different from the disclosure of Iliff. Here,
Appellant is simply quoting the claim language, which we find to be a mere
general allegation of patentability that does not specify, as required, how the
quoted language patentably distinguishes the claimed invention. This form
of argument in the Appeal Brief is wholly ineffective in demonstrating error
in the Examiner’s prima facie case to establish the patentability of the claims
on appeal. Ex parte Belinne, Appeal No. 2009-004693, decided Aug. 10,
2009, (BPAI) (informative). Accordingly, this omission of explanation was
noted by the Examiner in the Answer (FF 3).
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In the Reply Brief, Appellant then added additional arguments in an
attempt to cure the noted deficiencies in the Appeal Brief. We find these
arguments are new arguments raised for the first time in the Reply Brief.
The Examiner presented the basis for the rejection in the Final Rejection,
and maintained the rejection on the same basis in the Answer (FF 1 and 3).
Appellant’s arguments could have been raised in the Appeal Brief, but
Appellant failed to do so.
Although such newly-raised arguments are technically waived, the
previous panel nevertheless considered Appellant’s belated arguments in the
Reply Brief, but found them unpersuasive (Decision 14). As the panel
indicated in the Decision, “even assuming arguendo that the ‘Terminology
Section’ defines ‘objects’ in a manner distinguishing over Iliff [as set forth
in the Reply Brief]” (id., emphasis added), the panel still found the argument
unpersuasive. That is, as was stressed in the Decision, “we see no reason to
limit the recited ‘objects’ in accord with Appellant’s Reply Brief argument”
(id., emphasis added).
Thus, since the panel considered Appellant’s arguments in the Reply
Brief, Appellant has not identified any points misapprehended or overlooked
by the Board in the Decision regarding this point.
Appellant also argues in the Request that “[t]he Board has improperly
interpreted the term ‘object’ in an unreasonable way that is entirely not
consistent with the specification” (Request 4). As set forth in the Decision,
the panel broadly interpreted “objects” as having “a hierarchical relationship
such that the result of one of the objects is input to another of the objects,” as
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defined in claim 6 (Decision 13). The panel did not read limitations into the
claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Instead,
the panel defined the term “object” by its plain meaning, consistent with the
specification, and agreed with the Examiner that “objects” are disclosed in
Iliff’s MDATA system that is written in object-oriented C++ language
(Decision 12-14).
Accordingly, the panel found that Iliff’s nodes comprise objects
“having ‘a hierarchical relationship such that the result of one of the objects
is input to another of the objects’ and as directly invoking, e.g., calling or
passing control/data to, one another ‘so as to output a diagnosis of a
patient’” (Decision 14). Thus, while the panel did not import matter from
the specification to interpret claim 6 in the Decision, the panel nonetheless
relied upon the definition of the disputed term provided in Appellant’s
claim. The panel also considered the ordinary meaning of the disputed term
consistent with the Specification in construing the term.
Thus, Appellant has not identified any points misapprehended or
overlooked by the Board in the Decision regarding this point.
In the Request, Appellant also argues that the Board erred because
“[t]he Board agreed with the Examiner that the diagnostic objects are ‘not
precisely specified’ in Appellant’s specification” (Request 5). However,
Appellant has mischaracterized the Board’s Decision. That is, as set forth in
the Decision, “[c]ontrary to Appellant’s argument, claim 6 does not
‘precisely specify[] the diagnostic objects’” (Decision 12, citing App. Br.
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17-18; emphasis added). Here, the panel found that the claim did not further
define the term, not – as stated by Appellant – the specification that did not
define the term.
The panel considered all of the claim limitations, including descriptive
material, when determining patentability of Appellant’s invention over the
prior art. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). However,
here, the panel declined to give patentable weight to descriptive material that
did not have a new and obvious functional relationship with the underlying
data (substrate) (i.e., nonfunctional descriptive material). See Gulack, 703
F.2d at 1386; see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004);
King Pharm., Inc. v. Elan Pharm., Inc., No. 2009-1437, slip op. at 17-22
(Fed. Cir. Aug. 2, 2010).
As explained in the Decision, “claim 6 merely recites the ‘diagnostic
object’ as comprising ‘a disease object, a symptom object, a valuator object,
a question object, a node object and a candidates object’” wherein “labels
‘diagnostic,’ ‘disease,’ ‘symptom,’ ‘valuator,’ ‘question,’ ‘node,’ and
‘candidates’ are ‘nonfunctional descriptive’ material” (Decision 12). The
panel found that there is no functional relationship between the various
labels and the objects defined in the claim. In fact, even Appellant admits
that these terms are “adjectives that refer to specific types of diagnostic
objects” without pointing to any function given to these terms by the claim
(Request 6). As set forth in the Decision, the claimed “objects” read on any
diagnosis object since the non-functional descriptive labels do not
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distinguish the invention from Iliff in terms of patentability (Decision 12-
13).
Thus, Appellant has not identified any points misapprehended or
overlooked by the Board in the panel’s Decision regarding this point.
In the Request, Appellant further argues that “[t]he Board has also
erred in finding that the ‘nodes’ disclosed in Iliff ’669 correspond to
Appellant’s claimed ‘objects’” (Request 7). As discussed above, the panel
defined “object” by its plain meaning, consistent with the specification, and
agreed with the Examiner that “objects” are disclosed in Iliff’s MDATA
system that is written in object-oriented C++ language (Decision 12-14).
Accordingly, the panel found that Iliff’s nodes comprise the claimed
objects (Decision 12-13). Thus, the panel did not import matter from the
specification in interpreting the claims in the Decision as Appellant suggests,
but relied upon the definition of the term provided in Appellant’s claim. In
other words, the panel considered the term’s ordinary meaning consistent
with the Specification.
Thus, Appellant has not identified any points misapprehended or
overlooked by the Board in the Decision regarding this point.
Accordingly, Appellant’s Request does not persuade us of any points
we misapprehended or overlooked in the Decision, nor does Appellant’s
Request persuade us to reverse the Examiner’s rejection of claim 6 over Iliff.
Furthermore, as discussed above, Appellant does not request reconsideration
of the Decision to affirm the rejection of claim 6 under 35 U.S.C. 101, and
thus, the rejection of claim 6 stands.
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V. CONCLUSION
We have carefully considered the arguments raised by Appellant in
the Request for Rehearing, but find no points misapprehended or overlooked
by the Board in the original Decision and none of these arguments are
persuasive that the original Decision was in error. We are still of the view
that the invention set forth in claim 6 is unpatentable over the applied prior
art as well as under 35 U.S.C. 101 based on the record before us in the
original appeal. This Decision on Appellant’s Request for Rehearing is
deemed to incorporate the earlier Decision (mailed March 23, 2010) by
reference. See 37 C.F.R. § 41.52(a)(1).

VI. DECISION
We have granted Appellant’s request to the extent that we have
reconsidered the Decision of March 23, 2010, but we deny the request with
respect to making any changes therein.

REHEARING DENIED

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