Ex Parte Lorkovic

Patent Trial and Appeal Board

Dec 20, 2016

11384662 (P.T.A.B. Dec. 20, 2016)

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.
11/384,662 03/20/2006 Joseph Ernest Lorkovic LORK-001-US1 1962
19437 7590
P&T LAW, APC
1965 Chatsworth Boulevard
San Diego, CA 92107
12/22/2016 EXAMINER
CHIN, RICKY
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
eofficeaction @ appcoll.com
ky le @ ptlawgroup .com
docketing @ ptlawgroup .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ERNEST LORKOVIC
Appeal 2015-004341
Application 11/384,662
Technology Center 2400
Before JOSEPH P. LENTIVECH, SHARON FENICK, and
DAVID J. CUTITTAII, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The inventor, Joseph Ernest Lorkovic (Appellant), filed a request for
rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated November
4, 2016, of our decision mailed October 21, 2016 (hereinafter “Decision”).
In the Decision, we affirmed the Examiner’s rejection of claims 62—64, 67—
69,71-73,75, and 77-86.
ANALYSIS
A request for rehearing is limited to points that Appellant believes
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1).
Appeal 2015-004341
Application 11/384,662
Prima Facie Case
Appellant contends the Board misapprehended or overlooked
determining whether a prima facie case of obviousness had been established
in the rejection of claims 62—64, 67—69, 71—73, 75, and 77—86 under
35 U.S.C. § 103(a). Request 5. In particular, Appellant contends “[t]he
Board only reviewed details and never addressed 35 U.S.C. § 103 basis of
rejection on the required prima facie level and thus rendered an incomplete
and defective Appeal Decision.” Request 6. Appellant further contends
“[t]he Office bears the initial burden of factually supporting any prima facie
conclusion of obviousness and that was overlooked by the Board.”
Request 6. Appellant contends the analysis supporting a rejection under
35 U.S.C. § 103(a) should be made explicit “[y]et the Board never
considered the issue for face value requirements and jumped directly into
focusing on details of the sub section (a) seemingly assuming the required
prima facie obviousness existed and thus operating with a bias in favor of
the Office.” Request 7. According to Appellant, “[t]he Board should have
first reviewed on a high level the logic of the argument by understanding
what specifically the inventions are rather than apparently moving to
compare details pointed out by the Office with [preconceived] assumptions
and a focus on building rejection justifications over fact finding.”
Request 7.
Although Appellant characterizes these arguments as an issue that was
overlooked or misapprehended, we find Appellant’s arguments constitute
new arguments that were not previously raised in Appellant’s Appeal Brief
or in the Reply Brief. Except in certain situations not applicable here,
arguments not raised, and evidence not relied upon previously, are not
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Application 11/384,662
permitted in the request for rehearing.1 37 C.F.R. § 41.52(a)(1). Appellant
does not show good cause as to why the arguments were not presented in the
Briefs, and, thus, they are waived. 37 C.F.R. § 41.52; Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative). Moreover, arguments not
made are deemed waived. See id. 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 [Ajppellant, looking for
nonobvious distinctions over the prior art.”).
Further, even if Appellant’s arguments had been timely presented,
they are not persuasive. “[T]he prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production.” Hyatt
v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)); see also In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984). The Examiner satisfies his or her initial burden of
production by “adequately explaining] the shortcomings it perceives so that
the applicant is properly notified and able to respond.” Hyatt, 492 F.3d at
1370. In other words, the Examiner meets the procedural burden of
establishing a prima facie case when the rejection satisfies 35 U.S.C. § 132,
in “notify[ing] the applicant... [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
1 While Appellant argues that the Board must explicitly consider whether a
prima facie case has been made, citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007) (Request 7), we do not agree with this conclusion. Our
reviewing court has found that an argument that we give improper deference
to an Examiner’s opinion by failing to specifically review the prima facie
case is “a hollow argument.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011). We find no indication in KSR that this is incorrect.
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Application 11/384,662
[the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citing
35 U.S.C. § 132). 35 U.S.C. § 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). 35 U.S.C. § 132 does not mandate that in order to establish
a prima facie case, the Examiner must explicitly preempt every possible
response to a rejection. 35 U.S.C. § 132 merely ensures that an applicant at
least be informed of the broad statutory basis for the rejection of the claims,
so that the applicant may determine what the issues are on which he or she
can or should produce evidence. Chester, 906 F.2d at 1578. All that is
required of the Examiner to meet the 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. In re Jung, 637 F.3d at 1363.
Here, the Examiner’s identification of the theory of invalidity
(obviousness), the identification of the prior art basis for the rejections
(Astiz and Zimmerman; Astiz, Zimmerman, and Salkind), the identification
of where each limitation of the rejected claims is taught or suggested in the
prior art references, and the articulation of reasoning for combining the
references is sufficient to meet this burden under 35 U.S.C. § 132. See id.
Further, Appellant’s understanding of the Examiner’s rejections was
manifested by Appellant’s response to the Final Office Action and the
Examiner’s Answer by presenting arguments as to the merits of the
Examiner’s findings.
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Appeal 2015-004341
Application 11/384,662
Remaining Issues
Because Appellant’s remaining contentions (Request 8—14) essentially
address the merits of the Examiner’s findings, we have reviewed our
Decision in light thereof. For the reasons discussed infra, we are not
persuaded of error in our Decision.
Appellant’s contentions are premised on a “physical” or “bodily”
incorporation of limitations of one reference into the other. As we stated in
the Decision, this is not the standard. Decision 4 (citing In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). “[I]t is not necessary that the inventions
of the references be physically combinable to render obvious the invention
under review.” Sneed, 710 F.2d at 1550 (citations omitted). Instead, we
determined whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of the
applied references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“Combining the teachings of references does not involve an ability to
combine their specific structures.” In reNievelt, 482 F.2d 965, 968 (CCPA
1973).
In rejecting claim 62, the Examiner relies on two references, Astiz and
Zimmerman. Final Act. 6—7. Both references are directed to providing
complementary information or content based on a user interaction with a
video (e.g., a user clicking on a portion of a video). Astiz, Abstract, 4:54—
59; Zimmerman, Abstract, 142. In the Decision, we agree with the
Examiner that Astiz teaches a processor (Astiz, Fig. 3, element 33) operable
to cause video content to display in an area of a first display of a first remote
device (Astiz 4:40-44); receive a first set of position coordinates associated
with a user selection within the first area of the first display during display
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of the video content on the first display (Astiz 4:54—59, 65—67; 8:6—9); and
identify web content based on the first set of position coordinates (Astiz
8:13—19). Decision 4—5. We also agreed that Astiz teaches that the
processor is further operable to cause the web content to display on a second
display. Decision 5; see also Astiz 10:53—65. In the Decision, we also
agreed with the Examiner that Zimmerman teaches a processor operable to
cause web content to display on a second remote device. Decision 5; see
also Zimmerman | 57 (“[T]he consumer may request that the
complementary information be sent to a secondary screen, such as a personal
digital assistant, a touch-screen remote control, a web pad, a mobile phone,
or the like.”). Because Astiz teaches that the web content can be displayed
separately from the video being displayed to the user (Astiz 10:53—65), we
are not persuaded that we erred in agreeing with the Examiner that it would
be obvious to one of ordinary skill in the art at the time of the invention to
modify the teachings of Astiz to cause the web content to be displayed on a
second, remote display device, as taught by Zimmerman. See Decision 5—7;
see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420—21 (2007).
DECISION
In view of the foregoing discussion, we grant Appellant’s Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellant’s request with respect to making any change thereto.
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).
REHEARING DENIED
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