Ex Parte Lection et alDownload PDFPatent Trial and Appeal BoardJul 25, 201411170981 (P.T.A.B. Jul. 25, 2014) Copy Citation 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 2 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 3 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 4 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 Copy with citationCopy as parenthetical citation