Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 29, 2014

12005114 (P.T.A.B. Dec. 29, 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.
12/005,114 12/20/2007 Edward K.Y. Jung SE1-1029-US 1708
80118 7590 12/30/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
MYHRE, JAMES W
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
12/30/2014 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR.,
and LOWELL L. WOOD JR.
____________________

Appeal 2012-007566
Application 12/005,114
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–43 and 45–50. We AFFIRM.

1 The Appellants identify the real party in interest is Searete LLC. (App.
Br. 5).
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THE CLAIMED INVENTION
Appellants claimed invention is directed generally to data capture and
data handling techniques. Spec. para. 1. Claim 1 is illustrative of the
claimed subject matter:
1. A method comprising:
obtaining at least one item description;
determining an indication of fit between at least one
aspect of the item description and at least one cohort-linked
avatar; and
transmitting the indication of fit to at least one entity,
where each step is performed using a microprocessor.

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1–20, 22–41, 43, and 45–50 under 35
U.S.C. § 103(a) over Levinson (US 7,468,729 B1, iss. Dec. 23, 2008).2
The Examiner rejected claims 21 and 42 under 35 U.S.C. § 103(a)
over Levinson and Rogers (US 2005/0137015 A1, pub. June 23, 2005).
The Examiner provisionally rejected claims 22, 25, 26, 30–35, 37–42,
and 47 under 35 U.S.C. § 101 as claiming the same invention as that of
claims 51, 54, 58–66, 69, and 70 of co-pending Application No. 12/215,042.
The Examiner provisionally rejected claims 1, 4, 5, 9–14, and 16–21
on the ground of non-statutory obviousness-type double patenting over
claims 51, 54, 58–66, 69, and 70 of co-pending Application No. 12/215,042.

2 Claim 44 is canceled by Amendment filed Oct. 12, 2011. (Ans. 4). We
take as inadvertent error its inclusion at pages 12 and 18 of the Answer.
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Rejection under Section 103
Claims 1, 2, 4–8, 10, 12–20, 22–41, 43, and 45–50
The Appellants argue independent claims 1, 22, 43, and 47 together as
a group (App. Br. 60), so we select claim 1 as representative. No separate
argument is specifically directed to dependent claims 2, 4–8, 10, 12–20, 23–
41, 45, 46, and 48–50. App. Br. 60–61. Therefore, claims 2, 4–8, 10, 12–
20, 22–41, 43, and 45–50 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue variously that the rejection of independent claim 1
should not be sustained because the Examiner has failed to establish a prima
facie case of unpatentability. App. Br. 43–60. More particularly, Appellants
argue that a prima facie case of obviousness has not been established
because the “USPTO-cited technical material, which fails to recite several
express [terms]” of claim 1 and the USPTO has not explained how it reached
the mappings of the claim onto the cited prior art under a broadest
reasonable interpretation standard. Id. at 43–44; see also Reply Br. 4–5.
Appellants assert that the Examiner’s characterization that Levinson teaches
what is recited in claim 1 (App. Br. 45), and that the Appellants have
“shown by direct quotations” that claim 1 and the cited portions of Levinson
are “very different on their faces.” Id. at 50. In this regard, the Appellants
maintain that Appellants’ application is the only “objectively verifiable
[Examiner]-cited document of record that shows or suggests what the
[Examiner] purports the references to teach” (id. at 43, 49–52), and that the
Examiner is interpreting Levinson through the lens of the Appellants’
application, which is impermissible hindsight. Id. at 51–52.
The Appellants also charge that the Examiner is improperly relying on
personal knowledge or is taking official notice of one of more factors to
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reach the factual conclusion of what the cited technical material teaches, and
that the Examiner should be required to provide an affidavit or declaration
setting forth objectively verifiable evidence in support of the Examiner’s
assertions regarding what the cited technical material teaches and/or should
be interpreted to teach. App. Br. 51, 52. In addition, the Appellants assert
that modifying Levinson to meet the claim language would render Levinson
unsatisfactory for its intended purpose without “reconstruction and/or
redesign.” Id. at 56–57.
The Appellants’ arguments are unpersuasive. The Federal Circuit has
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “. . . . together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (citation omitted). Thus, “all that is required of
the office to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of § 132.” Id. at 1363.
Here, the Examiner notified Appellants that claim 1 is rejected under
35 U.S.C. § 103(a) as obvious over Levinson, and the Examiner cited
specific portions of the references, by column and line numbers, that are the
bases for the rejection. Ans. 12–13, 20–22. The cited portions of the
references, and the accompanying explanations provided by the Examiner,
collectively constitute the “objectively verifiable evidence,” which
Appellants allege is lacking. Reply Br. 5.
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Moreover, and contrary to Appellants’ suggestion that identity of
terminology is required, the Examiner does not contend, nor is the Examiner
required to demonstrate, that the identical text of rejected claim 1 appears in
the cited reference. The test of whether a reference teaches a claim
limitation is not whether the exact language is present. Instead, the relevant
inquiry is whether the limitation is taught or suggested by the prior art when
the claim is given its broadest reasonable interpretation in light of the
Specification. Cf. In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)
(interpretation of references “is not an ‘ipsissimis verbis’ test, citing Akzo
N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986)[,]” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991) (“[A] . . . reference . . . need not duplicate word
for word what is in the claims.”).
We find that the Examiner’s rejection satisfies the notice requirement
of § 132, and, therefore, establishes a prima facie case of obviousness.
Cf. Jung, 637 F.3d at 1363 (“[T]he [E]xaminer’s discussion of the theory of
invalidity . . . the prior art basis for the rejection [] and the identification of
where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
meet this burden.”). Therefore, the burden shifts to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner’s action, as well as the specific distinctions
believed to render the claims patentable over the applied references. See 37
C.F.R. § 41.37(c)(vii) (2011) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
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(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
Appellants have failed to carry their burden. Rather than distinctly
pointing out the Examiner’s supposed errors, Appellants have made mere
general allegations that the claims define a patentable invention because the
Examiner has failed to establish a prima facie case of unpatentability,
without specifically articulating what gaps exist between the cited references
and the claims. For example, although the Appellants charge the Examiner
with improper reliance on hindsight, personal knowledge, or improper
reliance on official notice, the Appellants do not provide persuasive
arguments or evidence to support that charge. The Appellants’ objection to
the Examiner’s technical explanation of how the claim is obvious in view of
the prior art, and their demand for “an affidavit or declaration setting forth
objectively verifiable evidence in support of [the] Examiner’s currently
unsupported assertions regarding what the cited technical material ‘teaches’
and/or should be interpreted to ‘teach”’ (see, e.g., App. Br. 49, 50, 52), also
lack technical explanation of what the error is. Appellants also do not
specifically identify (except by quoting the entirety of the claim) the several
“express terms” of claim 1 that the “USPTO-cited technical material”
allegedly fails to recite.
Appellants’ further argument that the Examiner has provided
conclusory statements only, and has failed to provide articulated reasoning
with some rational underpinning to support the obviousness conclusion
(App. Br. 52–54, citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007))
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also begs the question of whether any differences exist, and fails to address
the Examiner’s stated rationale for combining the references.
Viewed as a whole, Appellants’ arguments amount to a recitation of
the claim language, and a quotation of the Examiner’s statement of the
rejection followed by a quotation of each of the cited portions of the prior art
references, from which Appellants summarily conclude that the quoted
language of the references does not meet the quoted claim language. Other
than seeking direct quotations of identical terminology, Appellants have not
identified error in the Examiner’s interpretations of the cited references or
the claim language.
The Appellants may well disagree with how the Examiner interpreted
and applied the references, but Appellants offer no substantive arguments to
rebut the specific underlying factual findings made by the Examiner in
support of the ultimate legal conclusion of obviousness. And we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an [A]ppellant, looking for [patentable] distinctions over the prior
art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has
long been the Board’s practice to require an [Appellant] to identify the
alleged error in the [E]xaminer’s rejections,” citing Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential) (“The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.”)). Therefore,
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we sustain the Examiner’s rejection of claims 1, 22, 43, and 47 under 35
U.S.C. § 103(a).
For the same reasons, we also sustain the Examiner’s rejection of
dependent 2, 4–8, 10, 12–20, 23–41, 45, 46, and 48–50, which are not
argued separately except based on their dependence on claims 1, 22, 43, and
47.
Dependent Claims 3, 9, and 11
Appellants argue that dependent claims 3, 9, and 11 are patentable for
substantially the same reasons as set forth with respect to claim 1. App. Br.
61–68. We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
we sustain the Examiner’s rejection of dependent claims 3, 9, and 11 for the
same reasons.
Dependent Claims 21 and 42
Appellants do not provide argument specifically directed to claims 21
or 42. See App. Br. 60–61. Therefore, we sustain the rejection of claims 21
and 42 under 35 U.S.C. § 103(a) over Levinson and Rogers.

The provisional rejections of claims 1, 4, 5, 9–14, 16–22, 25, 26, 30–35, 37–
42, and 47 on the basis of double patenting over various claims of co-
pending application serial no. 12/215,042.
Notwithstanding that the Appellants do not contest these rejections,
we do not reach them. Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential) gives panels flexibility to reach or not reach provisional
obviousness-type double patenting rejections. In Ex parte Jerg, (PTAB
2012) (informative), [http://
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www.uspto.gov/ip/boards/bpai/decisions/inform/fd2011000044.pdf ], the
panel declined to reach provisional obviousness-type double patenting
rejections because the claims had changed since the rejection was initially
made. That is the case here.
The rejections were made in the office action mailed July 12, 2011
and in the Answer, mailed February 9, 2012. Ans. 6–12. The claims in the
co-pending application have since been amended, for instance, via an
amendment filed June 10, 2014. We decline to reach the provisional double
patenting rejections because “the claims now relied upon are not clearly the
same as those originally considered by the Examiner when the rejections
were initially made.” Id. at 5–6.

CONCLUSIONS OF LAW
We do not reach the double patenting rejections of claims 1, 4, 5, 9–
14, 16–22, 25, 26, 30–35, 37–42, and 47.
The Examiner’s rejection of claims 1–20, 22–41, 43, and 45–50 under
35 U.S.C. § 103(a) over Levinson is proper.
The Examiner’s rejection of claims 21 and 42 under 35 U.S.C.
§ 103(a) over Levinson and Rogers is proper.

DECISION
For the above reasons, the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1–43 and 45–50 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

rvb