Ex Parte Lee

Patent Trial and Appeal Board

Mar 30, 2017

13599517 (P.T.A.B. Mar. 30, 2017)

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.
13/599,517 08/30/2012 Eugene M. Lee 113708.121_CON4 1019
23400 7590 04/03/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
EXAMINER
YESILDAG, LAURA G
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @ poszlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2016-003036
Application 13/599,517
Technology Center 2800
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21—38. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s invention is an intellectual property (IP) information
analysis, searching, and access system that, among other things, administers
licenses. To this end, the claimed invention (1) tracks royalty payments paid
by licensees according to license agreements as actual royalty rates, and (2)
provides notifications of potential breaches when the rates are below those
for most favored nations. See generally Abstract; Spec. 45^47; Figs. 1, 11.
Appeal 2016-003036
Application 13/599,517
Claims 21 and 25 are illustrative:
21. A method for administering licenses, comprising:
providing a data store which is configured to store a
plurality of license agreements associated with a licensing
package;
tracking, in the computer processor device, payments of
royalties paid by licensees according to respective schedules in
the license agreements associated with the licensing package, as
actual royalty rates;
comparing, by the computer processor device, the actual
royalty rates in the license agreements associated with the
licensing package to most favored nation rates in the plurality of
license agreements in the licensing package; and
providing, by the computer processor device, a
notification of a potential breach when the actual royalty rates
are below any of the most favored nation rates.
25. A method for administering licenses, comprising:
providing a data store which is configured to store a
plurality of license agreements;
obtaining, by the computer processor device, from public
records, sales data indicating geographic or territorial area sales,
as actual activity, by the licensee, in producing products in
connection with one of the license agreements; and
comparing, by the computer processor device, the actual
activity by the licensee pursuant to one of the license agreements
with the activity permitted under geographic and territorial limits
in the one of the license agreements.
RELATED APPEALS
On page 4 of the Appeal Brief, Appellant cites seven related appeals,
all of which are cited on page 2 of the Reply Brief. We decided the appeals
in six of those applications, where one application (10/229,273) involved
multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr. 22, 2011)
(“Lee /’); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016) (“Lee IF),
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Application 13/599,517
reh ’g denied (PTAB Nov. 15, 2016). The appeals in Applications
13/599,206, 13/599,415, 13/599,639, 13/618,979, and 13/619,486 have also
been decided. See Ex parte Lee, No. 2014-009364 (PTAB Mar. 20, 2017);
Ex parte Lee, No. 2014-003734 (PTAB Mar. 2, 2017); Ex parte Lee, No.
2014-009733 (PTAB Mar. 17, 2017); Ex parte Lee, No. 2014-008495
(PTAB Mar. 13, 2017); and Ex parte Lee, No. 2014-008498 (PTAB Mar. 13,
2017).
THE REJECTIONS
The Examiner rejected claims 21, 27, and 331 under 35 U.S.C.
§ 112(a) or 112 (pre-AIA), first paragraph as failing to comply with the
written description requirement. Final Act. 2—6.2
The Examiner rejected claims 21, 27, and 33 under 35 U.S.C.
§ 112(b) or 112 (pre-AIA), second paragraph as indefinite. Final Act. 6—7.
The Examiner rejected claims 21—38 under 35 U.S.C. § 103(a) as
unpatentable over Rivette (WO 00/11575 Al; Mar. 2, 2000) and Richard A.
Rosen, Settlement Agreements in Commercial Disputes: Negotiating,
1 Although the Examiner rejects only independent claims 21, 27, and 33
under the first and second paragraphs of § 112 and omits their respective
dependent claims, the dependent claims nevertheless contain the same
identified deficiencies as the claims from which they depend. See 35 U.S.C.
§112, fourth paragraph. Although our decision is based solely on the
independent claims so rejected, we nonetheless leave the patentability of the
dependent claims to the Examiner to consider after our decision.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed April
17, 2014 (“Final Act.”); (2) the Appeal Brief filed January 8, 2015 (“App.
Br.”); (3) the Examiner’s Answer mailed November 27, 2015 (“Ans.”); and
(4) the Reply Brief filed January 26, 2016 (“Reply Br.”).
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Application 13/599,517
Drafting & Enforcement, Vol. 1, Aspen Publishers Online (2000). Final
Act. 8—20 (“Rosen”). Final Act. 8—20.
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellant’s Specification does not
demonstrate that Appellant possessed (1) comparing actual royalty rates to
most favored nation rates in license agreements, and (2) providing a
notification of a potential breach when those rates are below any of the most
favored nation rates, as claimed. Final Act. 2—6. Although the Examiner
acknowledges the disclosed cost analyzer for tracking royalties, a
compliance manager for tracking royalty rates for late payments, and
reference to a licensor being held in breach for lowering a royalty rate below
the most favored nation rate (Final Act. 3—5), the Examiner nonetheless
finds inadequate support for the particular limitations in the comparing and
providing steps in claim 21. Id.
Appellant argues that Specification’s disclosed functionality of the
cost analyzer 1106 in Figure 11, including its ability to monitor the royalty
amount for licensing packages, supports the recited comparing step, and that
presenting IP information to an end user via an IP application, such as the IP
licensor application, supports the providing step. App. Br. 10-12; Reply Br.
3-6.
ISSUE
Has the Examiner erred in rejecting independent claim 21 under §
112, first paragraph by finding that Appellant’s original disclosure does not
convey with reasonable clarity that Appellant possessed a computer
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Application 13/599,517
processor device that (1) compares the actual royalty rate in license
agreements to most favored nation rates in those agreements; and (2)
provides a notification of a potential breach when the actual royalty rates are
below any of the most favored nation rates?
ANALYSIS
We begin by noting that the last recited step in claim 21 that is
performed when actual royalty rates are below any of the most favored
nation rates is directed to a conditional limitation that need not be satisfied to
meet the claim. See Ex parte Schulhauser, No. 2013-007847, slip op. at 9—
10 (PTAB Apr. 28, 2016) (precedential).3
Nevertheless, despite the claim’s breadth in light of this conditional
limitation, the question remains whether Appellant’s original disclosure
conveys with reasonable clarity that Appellant possessed this conditional
limitation and the preceding comparing step when the application was filed.
On this record, we agree with the Examiner that Appellant’s original
disclosure falls short in this regard.
First, despite Appellant’s arguments to the contrary (App. Br. 10-12;
Reply Br. 3—6), Appellant’s original disclosure does not support the recited
comparing step. Appellant’s reliance on the disclosed functionality of cost
analyzer 1106 (App. Br. 5, 11; Reply Br. 5)—a function that is part of IP
licensing application 108 in Figure 11—is unavailing in this regard. As
explained on page 46 of the Specification, the cost analyzer assigns costs
3 This decision is available at the Board’s web site at
https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/precedential.
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and other payment schedules affiliated with licensing packages, thus
enabling licensors and licensees to track royalty and other costs associated
with licenses. The Specification further explains that licenses are tracked for
“a host of reasons” including, for example, uniformity, consistency, and
negotiation strategy success. Spec. 46.
Notably, for some users, losing track of royalty rates can be
disastrous. Id. For example, a licensor may have signed licensees up to a
“most favored nation” royalty guarantee. Id. By failing to monitor the
royalty amount in such a circumstance, a licensor can be held in breach if
they were to lower the license royalty rate below the most favored nation
rate, and not offer that rate to the first customer. Id. Appellant’s IP
licensing application also includes a royalty tracker 1112 that automatically
tracks licensees’ royalty payments. Id.
Although this description warns of a potential consequence of
lowering a license royalty rate below the most favored nation rate, namely a
possible breach, there is no explicit comparison of these rates in Appellant’s
original disclosure, let alone that a computer processor device performs that
comparison as claimed. To be sure, determining whether a royalty rate falls
below the most favored nation rate implies comparing these rates. But this
comparison, if done at all, need not be performed by the disclosed invention
(e.g., by the cost analyzer) as Appellant asserts (App. Br. 11; Reply Br. 5),
let alone in the manner claimed.
Nor does Appellant’s Specification reasonably convey possession of
the recited notification step of claim 21. As noted above, page 46 of
Appellant’s Specification notes that there may be a potential consequence,
namely a possible breach, by lowering the license royalty rate below the
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Application 13/599,517
most favored nation rate. But that admonishment hardly means that notice
of that possible consequence is provided under those circumstances by the
disclosed invention or otherwise, let alone by a computer processor device
as claimed.4 Although Appellant contends that the original disclosure
supports the recited contention because (1) IP information is provided to the
end user via an IP application, and (2) skilled artisans would allegedly know
how to program a computer to provide the recited potential breach
notification (Reply Br. 6), we find this contention unavailing.
We reach this conclusion even assuming, without deciding, that it
would have been obvious for the recited computer processor device to
perform the recited comparison and notification steps. Although the written
description requirement under § 112 does not demand any particular form of
disclosure or require a verbatim recitation, a description that merely renders
the invention obvious does not satisfy the requirement. Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (citations
omitted). Therefore, to the extent that Appellant contends that using a
computer processor device to perform the recited comparison and
notification steps would have been obvious from the original disclosure,
such a position is unavailing in light of Ariad.
The language of the original claims fares no better in this regard. To
be sure, original claims are part of the Specification, and, in many cases, will
satisfy the written description requirement. Crown Packaging Tech., Inc. v.
Ball Metal Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011)
4 We reach this conclusion despite the fact that claim 21 does not specify
any particulars regarding this notification, let alone the recipient of this
notification.
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(citing Ariad, 598 F.3d at 1349). But here, while original independent
claims 21, 27, and 33 recited, in pertinent part, tracking actual payments of
royalties paid by licensees according to respective schedules in the license
agreement, the original claims did not recite the particular comparison and
notification steps as now claimed. That original claims 21, 27, and 33 were
later amended on March 18, 2013 to add these specific steps is telling in this
regard.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21, and claims 27 and 33 not argued separately with particularity,
under (pre-AIA) 35 U.S.C. § 112, first paragraph as failing to comply with
the written description requirement.
THE INDEFINITENESS REJECTION
We will not, however, sustain the Examiner’s indefmiteness rejection
of claim 21 reciting, in pertinent part, providing a notification of a potential
breach when the actual royalty rates are below any of the most favored
nation rates. Final Act. 6—7. Our emphasis underscores the particular terms
that the Examiner concludes are unclear to render the claim indefinite—
conclusions that are problematic on this record.
First, although the Examiner correctly interprets the term “when” in
claim 21’s last clause as reciting a conditional limitation (id.; Ans. 7—8), that
does not mean the claim is indefinite. Rather, the limitation is simply broad
because the condition need not be satisfied to meet the claim as noted
previously. See Schulhauser, No. 2013-007847, slip op. at 9-10. In short,
the fact that claim 21 is broad in scope due to this conditional limitation does
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not mean that it is indefinite. See In re Gardner, 427 F.2d 786, 788 (CCPA
1970) (“Breadth is not indefiniteness.”).
Second, despite the Examiner’s conclusions to the contrary (Final Act.
7), the recited “potential breach” is reasonably clear when interpreted in
light of the Specification. As noted above, page 46 of Appellant’s
Specification explains that a licensor can be held in breach if they were to
lower the license royalty rate below the most favored nation rate, and not
offer that rate to the first customer. Our emphasis on the permissive “can
be” language underscores the fact that a breach under these circumstances is
merely possible: it is not guaranteed. Therefore, skilled artisans would
understand such a consequence to be a potential breach as claimed. So
although Appellant’s original disclosure does not convey with reasonable
clarity that Appellant possessed the recited notification of this potential
breach as noted previously, the limitation is nonetheless sufficiently clear to
satisfy the definiteness requirement under § 112, second paragraph.
We also find that claim 21’s reciting that this notification occur when
the actual royalty rates are below any of the most favored nation rates is also
clear on this record. As Appellant explains, the most favored nation rates in
claim 21 are those in the licensing package, and it is unnecessary or
desirable to decide which particular combination of license agreement and
most favored nation rate in that package caused the potential breach. App.
Br. 15—16; Reply Br. 10—12. Claim 21, therefore, reflects this concept by
not specifying particular most favored nation rates in the licensing package,
but rather broadly reciting any such rates. So although Appellant’s original
disclosure does not convey with reasonable clarity that Appellant possessed
the recited notification of this potential breach when the actual royalty rates
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are below any of the most favored nation rates as noted previously, the
limitation is nonetheless sufficiently clear to satisfy the definiteness
requirement under § 112, second paragraph.
Therefore, we are persuaded that the Examiner erred by rejecting
claims 21, 27, and 33 as indefinite.
THE OBVIOUSNESS REJECTION
The Examiner finds that Rivette discloses many recited elements of
claim 21 including comparing licensee activities (actual royalty rates) to
expected contract clauses, and monitoring for compliance, the Examiner
acknowledges that Rivette does not compare a specific contract clause of
most favored nation rate with an actual royalty rate paid by a licensee, but
cites Rosen as teaching this feature in concluding that the claim would have
been obvious. Final Act. 8—15.
Appellant argues, among other things, that because the Rosen
reference is only two pages which are said to be incomplete, there is not a
legally sufficient record to affirm the Examiner on appeal. App. Br. 20—22;
Reply Br. 16, 18—19. According to Appellant, the second page of this
“truncated two-page extract” of Rosen stops in the middle of a sentence that
appears to commence a teaching away from the proposed combination.
App. Br. 21; Reply Br. 18. In light of this omission, Appellant contends that
the Examiner’s alleged “intentional redaction” of this sentence and the
remainder of the truncated paragraph and section of Rosen implies that the
remainder of the reference is contrary to the rejection. App. Br. 21.
According to Appellant, we must resolve this evidentiary deficiency in
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Application 13/599,517
Appellant’s favor because to do otherwise would “ratify an incomplete
record.” App. Br. 22.
ISSUE
Has the Examiner erred in rejecting claims 21—38 under § 103 by
relying on two pages from the Rosen reference?
ANALYSIS
As Appellant indicates, the record contains only two pages from the
cited Rosen reference: the first page of the cited excerpt, labeled “Page 1 of
2” corresponds to Rosen’s page 39, and the second page of the excerpt,
labeled “Page 2 of 2” corresponds to Rosen’s page 40. In the rejection and
the Answer, the Examiner cites solely page 1 of that excerpt, and, in
particular, two different passages on that page: one of which is in the first
paragraph of Section C(l) entitled “‘Most Favored Nation’ Clauses,” and the
other in footnote 162. See Final Act. 13—14; Ans. 15. Among other things,
the Examiner quotes the second sentence of that footnote for teaching
monitoring a royalty rate to automatically offer the lower royalty rate to a
first party (Waterloo) and all other competitors of Waterloo, preventing any
breach of royalty rate agreements in view of most favored nation rates as a
guarantee. Id.
Notably, however, the second page of the Rosen excerpt concludes
with the following paragraph whose first sentence is incomplete: “In
contrast, royalty-bearing licenses for future use of patents — and other
forward-looking contract terms in settlement agreements —” (emphasis
added). Our emphasis on the introductory phrase “[i]n contrast” underscores
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the contradictory language that Appellant seizes upon in this dispute.
Although the Examiner does not rely on this particular paragraph or any
passages on page 2 of the Rosen excerpt, Appellant does rely on this
paragraph because it is said to apparently commence a teaching away from
the proposed combination in light of the introductory “in contrast” language.
See App. Br. 21; Reply Br. 18.
Because this sentence and associated paragraph and section is
incomplete, we cannot say what this sentence says exactly—let alone what it
means in context. And the fact that it begins with the phrase “[i]n contrast”
at least suggests that what follows contradicts at least some earlier
disclosure. To what extent this paragraph and related text in the cited
section of Rosen contradicts the relied-upon passages on page 1, we cannot
say on this record, let alone that it teaches away from the claimed invention.
But what we can say is that the contradictory term “[i]n contrast” provides at
least some basis—however minimal—for Appellant’s contention that there
may be at least some disclosure following page 2 (i.e., Rosen’s page 40) to
substantiate an argument that Rosen teaches away from the claimed
invention.
To be sure, partial submissions of prior art documents are permissible
in certain circumstances. See In re Enhanced Security Res., LLC, 739 F.3d
1347, 1355 (Fed. Cir. 2014) (discussing the USPTO’s interpretation of prior
art submissions in reexamination proceedings); see also id. (noting that, for
texts or articles over 50 pages, requests for information under 37 C.F.R. §
1.105 can be satisfied by providing copies of those pages that provide the
particular subject matter indicated in the request).
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But missing pages may sometimes be necessary to understand a prior
art reference. Enhanced Security, 739 F.3d at 1356. This understanding is
particularly important where, as here, the pages that were provided tend to
suggest that what follows is contradictory. Accord id. at 1357 n. 14 (noting
that if the cited reference’s missing pages were necessary to a full
understanding of the software in that reference, the Examiner could not have
relied on the reference without securing the missing pages). Here, Rosen’s
missing pages are necessary to consider, as we must, the reference as a
whole, including portions that could lead away from the claimed invention.
See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir.
1987).
This is not a case like Enhanced Security where, despite a challenge to
the Board’s reliance on an incomplete prior art reference, nothing in that
reference’s table of contents or the available pages suggested that the
missing content contradicted the available portions of that reference on
which the USPTO relied. Id. at 1357. That is, in Enhanced Security,
nothing on the record suggested that the cited reference’s missing sections
were necessary as possibly disparaging or teaching away from applying the
relied-upon teachings to the claimed invention in that case. Id.
But here, we have just the opposite: the paragraph beginning on the
last two lines of the last page of Rosen’s two-page excerpt tends to suggest
such a contradiction. Therefore, this apparently contradictory excerpt
provides at least some basis—however minimal—for Appellant’s contention
that at least the remainder of the paragraph and associated section could
teach away from the claimed invention.
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Given this challenge to the content and applicability of the cited
excerpt of Rosen to the claimed invention, the burden shifted to the
Examiner to rebut this challenge by at least (1) explaining why the challenge
is meritless given the evidence of record, or (2) providing additional
evidence to substantiate the Examiner’s findings. To satisfy the latter
requirement, the Examiner must provide the appropriate additional pages
from Rosen or other corroborating evidence to fill the evidentiary gaps in the
Examiner’s findings so that they are substantiated on the record by a
preponderance of the evidence. These additional findings are particularly
important where, as here, the record is incomplete and complete version of
the cited non-patent document is apparently unavailable to Appellant, yet
available to the Examiner. Cf. Enhanced Security, 739 F.3d at 1360 (J.
O’Malley, dissenting) (“Where a reference is proffered by an interested
party with control over all information relating to that reference, it is not too
much to ask that the proffer be complete in all material respects.”); see also
id. at 1361—62 (“Given the potential impact of a Board decision . . ., due
process concerns arise when, as here, a complete version of a reference is
unavailable to a patentee, but the PTO relies on it with no explanation from
the provider as to why it is incomplete.”).
Notably, the Examiner cited the entire Rosen reference on the PTO-
892 form that accompanied the Final Rejection on April 17, 2014. In the
Advisory Action, however, the Examiner noted that “only the relevant pages
of [Rosen’s] entire published book were provided as prior art,” and
concluded that “there is no need for an entire volume copy of the book.”
Adv. Act. mailed Aug. 25, 2014, at 2. Significantly, the Examiner revised
the PTO-892 form in the Advisory Action by adding the following text to
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the Rosen citation: “(SPECIFICALLY AT LEAST Chapter ‘Settling Patent
Cases: section 33.04[C][l] ‘Most Favored Nation’).” Adv. Act. (emphasis
in original). Accord App. Br. 21 n.l; Reply Br. 18 (noting this revision).
This “at least” language is telling, for it suggests that the Examiner
relies on more than Rosen’s section 33.04[C][ 1 ]—a cited section that is
incomplete on this record in any event. So aside from the fact that Rosen’s
cited section 33.04[C][1] is facially incomplete, it is unclear what additional
disclosure in Rosen the Examiner finds relevant by citing at least that
section from Rosen. At a minimum, the Examiner’s somewhat puzzling
citation in the Advisory Action’s revised PTO-892 form raises a legitimate
question what additional disclosure from Rosen that the Examiner deems
relevant, but nonetheless does not provide on this record to enable a
reasonable assessment of the merits of the reference as a whole—including
portions that could lead away from the claimed invention. See Panduit, 810
F.2d at 1568. Accord Reply Br. 18 (noting that the USPTO has clearly
considered more than what is of record based on the Examiner’s citation on
the PTO-892 form in the Advisory Action).
Accordingly, the weight of the evidence on this record favors the
Appellant’s position at least to the extent that the apparently contradictory
passage in the last two lines of Rosen’s excerpt provides at least some
basis—however minimal—for Appellant’s contention that at least the
remainder of the last paragraph and associated section of Rosen could teach
away from the claimed invention. See App. Br. 20-22; Reply Br. 16, 18—19.
That the Examiner did not respond to this particular challenge in the
Examiner’s Answer only further undermines the evidentiary basis for the
Examiner’s rejection.
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Claims 25, 26, 31, and 37
In addition to the evidentiary deficiencies of the 2-page Rosen excerpt
noted above, the Examiner’s obviousness rejection of independent claims
25, 31, and 37 is problematic for additional reasons. First, these claims are
independent whose scope and content differs significantly from independent
claims 21, 27, and 33. Yet, in rejecting claims 25, 31, and 37, the Examiner
finds that Rivette and Rosen collectively disclose the invention recited in the
other independent claims 21, 27, and 33 and further comprises the
limitations of independent claims 25, 31, and 37, citing various passages
from Rivette for teaching these limitations. See Final Act. 18—20. To the
extent that the Examiner considers claims 25, 31, and 37 to depend from
independent claims 21, 27, and 33 or otherwise include all their limitations
in light of this “further comprising” language in the rejection, they do not.
Accord App. Br. 29 (noting this point).
Notably, the Examiner does not cite any disclosure from Rosen in
rejecting claims 25, 31, and 37, let alone explain how or why that reference
was cited in rejecting these claims as Appellant indicates. Reply Br. 20.
Nor does the Examiner provide the requisite reason to combine these
references in concluding that claims 25, 31, and 37 would have been obvious
over their collective disclosures as Appellant indicates (App. Br. 30; Reply
Br. 20)—independent claims that recite different subject matter from the
other independent claims as noted previously.
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To the extent that the Examiner finds that claims 25, 31, and 37 are
anticipated by Rivette or that these claims would have been obvious over
Rivette alone, no such rejections have been articulated on this record, nor
will we speculate in that regard here in the first instance on appeal. What we
can say, however, is that the Examiner’s articulated rejection over Rivette
and Rosen is problematic on this record. That the Examiner’s Answer fails
to respond to Appellant’s arguments in this regard only further undermines
the propriety of the Examiner’s rejection.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 21—38 as obvious over Rivette and Rosen. Because this issue is
dispositive regarding our reversing the Examiner’s obviousness rejection of
these claims, we need not address Appellant’s other associated arguments.
CONCLUSION
The Examiner did not err in rejecting claims 21, 27, and 33 under
§ 112, first paragraph, but erred in rejecting those claims under § 112,
second paragraph.
The Examiner erred in rejecting claims 21—38 under § 103.
DECISION
The Examiner’s decision to reject claims 21—38 is affirmed-in-part.
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).
AFFIRMED-IN-PART
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