Ex Parte Lection et al

Patent Trial and Appeal Board

Jul 25, 2014

11170981 (P.T.A.B. Jul. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID B. LECTION, ERIC L. MASSELLE,
and MOHAMAD R. SALAHSHOOR

__________

Appeal 2012-001060
Application 11/170,981
Technology Center 2100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing requesting reconsideration of our
Decision of May 7, 2014 (“Decision”) affirming the Examiner’s obviousness
rejections. We have jurisdiction under 35 U.S.C. § 6(b). Appellants present
several arguments for our reconsideration. We grant the Request to the
extent that we vacate our earlier Decision and reinstate the 35 U.S.C. § 101
and § 103 analysis herein, designating the rejection under 35 U.S.C. § 103 as
a NEW GROUNDS OF REJECTION pursuant to our authority under 37
C.F.R. § 41.50(b).
Appeal 2012-001060
Application 11/170,981

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Appellants acknowledge the binding precedent of Mewherter,1
although disagreeing with the analysis and conclusion, do not further contest
the affirmance of the rejection under 35 U.S.C. § 101 (see Req. Reh’g 2).
Appellants contend that “if the Board did not overlook Appellants’
arguments, the Board implicitly agreed with these arguments since the Board
has presented an (undesignated) new grounds of rejection based upon the
teachings of Robison” (Req. Reh’g 3).
Upon reconsideration, we agree with Appellants that the reasoning of
our Decision, while relying on the same references as the Examiner, differs
significantly enough that Appellants have not had a fair opportunity to
respond to the thrust of the rejection. Therefore, to be fair to Appellants, we
will designate the affirmance of the 35 U.S.C. § 103 rejection as a New
Ground of rejection.
Appellants also contend that
First, the holding Burhans, as characterized by the Patent
Office, is not good law. Second, the Patent Office has
mischaracterized the holding of Burhans. Third, the fact
pattern of Burhans bears no semblance to the facts of the
present application. Fourth, the Board’s citation of Burhans
does not address the specific arguments raised by Appellants
on Appeal. Fifth, the Board relies upon findings of fact that
are not consistent with the language of the claims.

(Req. Reh’g 6.)
We do not find any of Appellants’ arguments regarding our citation of
Burhans2 persuasive. Appellants do not identify any decision specifically

1 Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB May 8,
2013) (precedential).
Appeal 2012-001060
Application 11/170,981

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overruling Burhans. While we agree that Burhan’s facts differ and that there
is no per se rule that regarding “order of steps,” Burhans recognizes that
reordering known steps is reasonably obvious, where the reordering is
merely a “predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In the
instant situation, the flow charts demonstrate reordering the steps depending
upon the data received (see, e.g., Robison, Figures 3A-3B; FF 7).
Appellants further contend, regarding the “in lieu of” limitation, that if
“the Board is now relying upon the hidden form 209 and the secondary form
209 to teach the limitations at issue, then the Board cannot rely upon the
main form 207” (Req. Reh’g 10).
We are not persuaded. The rejection at issue is for obviousness, not
anticipation. Thus, the issue is not whether Robison or Aldridge teach the
invention in a single embodiment, but rather whether when an idea
[I]s available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in
the art would recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.

KSR, 550 U.S. at 417.
We remain persuaded that Robison and Aldridge render obvious the
“in lieu of” limitation for the reasons discussed in the Decision (Dec. 13).

2 In re Burhans, 154 F.2d 690, 692 (CCPA 1946).
Appeal 2012-001060
Application 11/170,981

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DECISION
Appellants have not persuaded us that our decision to affirm the
obviousness rejection of the Examiner was erroneous. We grant the Request
to the extent that we vacate our earlier Decision and reinstate the 35 U.S.C.
§ 101 and § 103 analysis herein, designating the rejection under 35 U.S.C.
§ 103 as a NEW GROUNDS OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b). The date of decision for review purposes will
be the date of mailing of the instant Decision.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

GRANTED-IN-PART; 37 C.F.R. § 41.50(b)

cdc