11695261 - (R) (P.T.A.B. Aug. 12, 2013)

Ex Parte Loera et al

Patent Trials and Appeals BoardAug 12, 2013

11695261 - (R) (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte OSCAR LOERA, JR., MICHAEL GENE SURBER, CRAIG EDWARD CROSS and MARC BRIAN RUSKIN ________________ Appeal 2011-008441 Application 11/695,261 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, BART A. GERSTENBLITH and CARL M. DeFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-008441 Application 11/695,261 2 STATEMENT OF THE CASE Appellants have filed a Request for Rehearing (“Req. Reh'g.”) dated Oct. 15, 2013, under 37 C.F.R. § 41.52 of the Decision on Appeal (“Decision”) mailed Aug. 14, 2013, regarding the rejection of claims 1-14. We do not modify our opinion. THE REQUEST FOR REHEARING A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an Applicant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Appellants seek a rehearing because the Board, in its Decision, issued a new ground of rejection asserting that the claim term “pre-loaded” is indefinite based on the Board being unable to ascertain a clear point in time before which the data is to be loaded. Req. Reh'g. 2, Decision 3. The Board determined that the lack of a reference point in time “leaves open whether the claims are to be interpreted such that the data is to be loaded, for example, prior to initial sale, prior to initial use, or prior to any further subsequent use.” Decision 3. Appellants contend that “one of skill in the art would understand based on the specification” that “an underlying purpose of Appeal 2011-008441 Application 11/695,261 3 the invention” is to provide assistance “prior to the end user’s initial access.” Req. Reh'g. 2. Hence, Appellants now contend that the reference point in time is the end user’s “initial access” such that the claimed data is to be loaded before that time. The limitation in question, which was added by amendment, is directed to a certain database that “is pre-loaded in the navigation system.” Decision 3. Appellants reference paragraphs [0003]-[0005] of the Specification as support for the proffered “initial access” time frame but these paragraphs address how Appellants’ device is to be used and its advantages. Req. Reh'g. 2. These paragraphs do not make clear that the pre- loading is with respect to the end user’s “initial access” as presently asserted. As stated in the Decision, without guidance as to what time frame is referenced, “it becomes a matter of speculation as to whether a device that is ‘pre-loaded’ as claimed can be distinguished from a device which may initially be manufactured in an un-loaded state but which later becomes loaded and then subsequently used (see e.g., Yokota and Br. 4).” Decision 3-4. Appellants do not dispute that the claim term “pre-loaded” is associated with a time element (see Decision 3) but what makes this claim indefinite is the ambiguity as to the fixation of that time at any one particular point over any other particular point. We understand that Appellants’ device is to assist the end user and that no such assistance is likely to be forthcoming if the database is wanting; but the claims do not preclude the database from being subsequently updated or loaded after use of the device (and/or its database) has already occurred. Instead, the claims only require that the database is “pre-loaded in the navigation system.” Appeal 2011-008441 Application 11/695,261 4 Appellants do not persuade us that the new ground of rejection as stated in our Decision is a consequence of points misapprehended or overlooked. Appellants further do not persuade us of error in the reliance on In re Steele, 305 F.2d 859, 862 (CCPA 1962), or Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential), cited therein. Decision 4. We are also guided by In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), to the effect that “[i]f no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.” DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants’ Request for Rehearing, but is denied with respect to our making any modification to the Decision. No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED mls