Ex Parte Ludwig et alDownload PDFPatent Trial and Appeal BoardApr 22, 201495001648 (P.T.A.B. Apr. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,648 06/08/2011 Lester F. Ludwig 2525.622REX0 3838 84666 7590 05/21/2014 Reed Smith LLP P.O. Box 488 Pittsburgh, PA 15230-0488 EXAMINER WORJLOH, JALATEE ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ YOUTUBE, LLC and GOOGLE INC. Requester v. PRAGMATUS AV LLC Patent Owner ____________ Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 1 Technology Center 3900 ____________ Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and ANDREW J.DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. CORRECTED DECISION ON APPEAL 2 1 The patent involved in this reexamination appeal proceeding (the “’132 Patent”) issued to Ludwig et al. on June 1, 2010. 2 An inadvertent error occurred with respect to the disposition of claims 2-17. Accordingly, the Decision mailed April 22, 2014 is vacated and replaced with the present corrected Decision. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 2 STATEMENT OF THE CASE Introduction On June 8, 2011, YouTube, LLC and Google, Inc. (Requester) filed a Request for Inter Partes Reexamination of the ’132 Patent (Request). Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the final decision of the Examiner adverse to the patentability of claims 1-5 and 10-14 over various references. Requester appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s decision not to adopt or maintain various other proposed rejections. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). We heard oral argument in this Appeal on April 9, 2014, a transcript of which will be entered into the electronic record in due course. We affirm-in-part. Related Proceedings Owner has informed us that the ’132 Patent is closely related to US Patents 7,813,663 and 7,822,813 and that as of the date it filed its Appeal Brief (App. Br.) on July 30, 2012, those related patents were subject to ongoing inter partes reexaminations having control numbers 95/001,646 and 95/001,649, respectively, and that neither of them were on appeal at that time. App. Br. 3. Owner has also informed us that as of the date it filed its Appeal Brief, the ’813, ’663, and ’132 Patents were involved in then pending litigation in the U.S. District Court for the Northern District of California styled Pragmatus AV, LLC v. Facebook, Inc. et al., Case No. 5:11CV- Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 3 00494-EJD and that the litigation had been stayed pending the results of these reexaminations. App. Br. 3. Requester has informed us of the following related prior appeals to the Board based on prior reexaminations with control numbers: 90/009,008; 90/009,016; 90/009,015; 90/009,021; 90/009,031, and 90/009,020. Requester Appeal Brief (Req. App. Br. 6). Requester has also informed us of the following related appeals that were pending as of the May 6, 2013 date it filed its Requester Appeal Brief: 95/001,649, 95/001,715 and 95/001,716. Id. Invention The ’132 Patent describes the invention as follows: An audio-video storage device includes a storage interface to interface with a storage medium that store a media file including video. The storage device includes a network interface to interface with a local network. The storage device performs replication of the stored media file. The storage device provides access to the media file to a first client device and a second client device over the local network and the wide area network respectively. ’132 patent, Abstract. Claims Claims 1-19 are subject to reexamination. Claims 1-5, 10-14, 18 and 19 have been rejected. Claims 1-17 are original patent claims. Claims 1 and 10 are independent. Claim 1 is illustrative: Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 4 1. A multimedia storage server comprising: a network interface to simultaneously provide a first client device and a second client device with audio-video network connections for editing on the multimedia storage server at least one of a plurality of components of a multimedia document that includes video and that is stored on the multimedia storage server, wherein structural relationships among the plurality of components form a basis for at least spatial layout and order of presentation of the multimedia document, and wherein editing includes inserting respective first and second sets of annotations in the multimedia document and to simultaneously provide a third client device with access to the video portion of the edited multimedia document and to at least the first and second sets of annotations; and a storage interface to interface with storage facilities, the storage facilities to store video received from the first client device and the second client device respectively as first and second multimedia documents, wherein the multimedia storage server is configured to: receive from at least two of the first, second, and third client devices, requests for access to the edited multimedia document, wherein the request is communicated using IP protocol, provide simultaneous access to the edited multimedia document including at least the first and second sets of annotations to the client devices requesting access, and provide simultaneous access to the edited multimedia document to the client devices requesting access by enabling transfer of at least the video portion of the edited multimedia document to the client devices requesting access, and wherein the client devices requesting access to the edited multimedia document include respective decompression modules to decompress the transferred edited multimedia document for playback. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 5 Prior Art Quentin US 5,208,745 May 4, 1993 Fortier US 5,276,860 Jan. 4, 1994 Gerlach Jr. US 5,317,732 May 31, 1994 Palmer US 5,623,690 Apr. 22, 1997 Roseman US 6,608,636 B1 Aug. 19, 2003 Andy Hopper, Pandora - An Experimental System for Multimedia Applications, Operating Systems Review, 1-16, Cambridge, United Kingdom (January 12, 1990) (hereinafter “Hopper”) Danny Goodman, The Complete HyperCard 2.0 Handbook, 3rd Edition, Bantam Books, iii-xxxv and 1-892, United States of America (August 1990) (hereinafter “HyperCard”) Kevin Jeffay et al, System Design for Workstation-Based Conferencing With Digital Audio and Video, Proceedings of TRI COMM ’91, Apr. 18-19, 1991 (hereinafter “Jeffay”) Dick C. A. Bulterman et al, A Structure for Transportable, Dynamic Multimedia Documents, Proceedings of the Summer 1991 USENIX Conference, June 1991 (hereinafter “Bulterman”) Frank M. Kappe, Aspects of a Modern Multi-Media Information System, Institute for Foundations of Information Processing and Computer Supported New Media (IICM) Graz University of Technology, June 1991 (hereinafter “Kappe”) David L. Drucker et al, Quicktime Handbook, The Complete Guide to Mac Movie Making, Hayden (A division of Prentice Hall Computer Publishing), 1992 (hereinafter “QuickTime”) Chris Adie, Network Access to Multimedia Information, Edinburgh University Computing Service, June 29, 1993 (hereinafter “Adie”) Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 6 Owner’s Contentions – Owner’s Appeal Owner contends that the Examiner erred in entering the following grounds of rejection against claims 1-5 and 10-14 (App. Br. 6): 1. The rejection of claims 1-5 and 10-14 under 35 U.S.C. § 103(a) as unpatentable over Roseman, Hopper, and Adie; and 2. The rejection of claims 1-5, 10, 11, 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Jeffay, Palmer, and Bulterman. Requester’s Contentions – Requester’s Appeal Requester contends that the Examiner erred in failing to enter the following grounds of rejection against claims 1-19 (Req. App. Br. 10): 1. The proposed rejection of claims 1-19 under 35 U.S.C. § 102(b) as anticipated by Kappe; 2. The proposed rejection of claims 1-17 under 35 U.S.C. § 103(a) as unpatentable over Kappe, HyperCard and QuickTime; 3. The proposed rejection of claims 6-8 and 15-17 under 35 U.S.C. § 103(a) as unpatentable over Kappe, Gerlach and Fortier; 4. The proposed rejection of claims 6-8, and 15-17 under 35 U.S.C. § 103(a) as unpatentable over Roseman, Hopper, Adie, Gerlach and Fortier; and 5. The proposed rejection of claims 1, 3 and 10 under 35 U.S.C. § 103(a) as unpatentable over Jeffay, Palmer and Quentin. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 7 ANALYSIS Owner’s Appeal In view of the U.S. Supreme Court’s opinion in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), our analysis of both of these rejections does not turn upon whether the Examiner has provided an adequate teaching, suggestion, or motivation to combine the references. Instead, we view the question before us to be whether sufficient difference exists between the prior art and the Owner’s claims to render the claims nonobvious. In KSR, the Supreme Court reaffirmed that “[w]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). With respect to the Examiner’s rejection of claims 1-5 and 10-14 as being unpatentable under 35 U.S.C. § 103(a) over Roseman, Hopper, and Adie, Owner relies on the limitations of claim 1 and similar limitations within claim 10. Owner does not provide arguments for separate patentability for any other claim within this group. Accordingly, we will decide the appeal of these claims on the basis of claim 1 alone. See 37 C.F.R. § 41.67(c)(1)(vii). Owner argues that the obviousness rejection of claim 1 over Roseman, Hopper, and Adie lacks an articulated rational underpinning for why one of ordinary skill in the art would have had a “[v]iable [r]eason to combine” the teachings of these references to arrive at the claimed invention. App. Br. 7. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 8 Specifically, Owner argues that the Examiner has engaged in impermissible reconstruction and has failed to offer any explanation of what is considered to be taught by each reference or why one of ordinary skill in the art “would seek to combine them to produce the claimed invention.” Id. at 10. The Examiner disagrees, finding that Roseman is directed to a “remote conferencing system of the multi-media type.” Ans. 10. The Examiner points out that Roseman discloses, as set forth in the Abstract, a common display which may be modified by any party, by writing on it, or pointing to different parts of it, and that other parties can see those modifications. The Examiner cites Adie for the teaching that HTML contains many enhancements useful for multimedia support, such as the display of video and other non-text data, in the same window as textual material. Finally, the Examiner finds that Hopper describes the use of multimedia workstations in a working environment, making the generation of multimedia documents as easy as producing text. In view of the above, the Examiner concludes that each of the cited references teaches multimedia documents that are compatible. Ans. 10-11. Further, the Examiner agrees with Requester that “the use of Adie’s multimedia documents to store Roseman multimedia components” would have been the application of a known technique to an area ready for improvement. Id. at 11. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). “Obviousness does not Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 9 require absolute predictability. Only a reasonable expectation that the beneficial result will be achieved is necessary to show obviousness.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.Cir. 1986) (internal citations omitted). Consequently, we find no support for the contention that the Examiner’s proffered combination of Roseman, Hopper, and Adie lacks an articulated rational underpinning for why one of ordinary skill in the art would have had a viable reason to combine the teachings of these references or that the Examiner has failed to establish such a reasonable expectation of success in formulating the rejection. In contrast, we find the predictable use of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill at the time of the invention. Owner also argues that the Examiner erred in rejecting claims 1-5 and 10-14 as unpatentable under 35 U.S.C. § 103(a) over Roseman, Hopper, and Adie, urging that one of skill in the art could not have combined these references in the suggested way. Owner argues that Adie “is internally incompatible” and “incompatible with the Roseman and Hopper references” and that Roseman and Hopper “teach incompatible video conferencing hardware.” App. Br. 11-14. As noted above, the Examiner finds that Roseman, Adie, and Hopper all disclose multimedia documents and are indeed compatible. Ans. 10-11. Firstly, we find Owner’s assertion that Adie is “internally incompatible” to be without merit. Adie discloses a description of multiple Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 10 existing systems and is relied upon to demonstrate the state of the art in this area. Further, “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Here, the Examiner does not propose that the features of Adie, such as Adie’s description of the format of HTML containing enhancements useful for multimedia support be physically incorporated into Roseman and Hopper. Instead, the Examiner concludes that the combined teachings of the references would have suggested to one of ordinary skill in the art the Appellant's invention. The Appellant's argument overlooks “the relevant combined teachings of the . . . references.” Andersen, 391 F.2d at 958 (dismissing the argument that a combination would result in an inoperative structure). Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 11 Therefore, we conclude that the Examiner did not err in finding reason to combine teachings from Adie with Roseman and Hopper to reject independent claim 1. With respect to the Examiner’s rejections of claims 1-5, 10, 11, 13, and 14 as being unpatentable under 35 U.S.C. § 103(a) over Jeffay, Palmer, and Bulterman, Owner once again relies on the limitations of claim 1, as well as similar limitations within claim 10, and does not provide arguments for separate patentability for any other claim within this group. Accordingly, we will decide the appeal of these claims on the basis of claim 1 alone. See 37 C.F.R. § 41.67(c)(1)(vii). Owner argues that it is improper to combine Jeffay, Palmer, and Bulterman since those references teach away from that combination. Specifically, Owner urges that neither Jeffay nor Palmer discloses a multimedia document, as recited in the claims and that Bulterman and Jeffay teach away from their combination. App. Br. 14. Specifically Owner argues that the “hypermedia database” within Jeffay, which is relied upon by the Examiner, “is just a collection of objects which multiple users may access, but is not a ‘multimedia document’ as recited in the claims.” Owner’s basis for this position is the alleged failure of the hypermedia database to disclose multimedia documents “wherein structural relationships among the plurality of components [in the multimedia document] form the basis for at least spatial layout” as recited in claims 1 and 10. Id. at 15. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 12 In response, the Examiner cites Jeffay at page 170, which describes the hypermedia database as including “many types of information including text, drawings (2D graphics), and recorded sight and sound.” Ans. 11. We concur with the Examiner’s position. Owner appears to be arguing that media of different types may be stored within the hypermedia database; however, there is no indication that any one document includes multimedia and/or that such a document discloses “structural relationships” among the components thereof. We disagree with the Patent Owner’s position. Jeffay expressly describes “recorded sight and sound,” which we find meets any reasonable definition of “multimedia.” Further, it is self-evident that any stored drawing or recorded sight necessarily discloses the structural relationships between the various components depicted therein. Similarly, Palmer discloses a multimedia “filmclip” message storage apparatus for video teleconferencing. For the same reasons set forth above, we again find that a recorded “film clip” necessarily discloses a multimedia document wherein the structural relationships between the various components are disclosed. With respect to Owner’s argument that Bulterman and Jeffay teach away from the proposed combination, the Examiner finds that Jeffay, Bulterman, and Palmer all describe means for retrieving/accessing multimedia documents. Ans. 11-12. We are convinced of the soundness of the Examiner’s position. We find no evidence of the alleged “teaching away” from the Examiner’s proposed combination, beyond a mere assertion by Owner. Consequently, Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 13 we find no error in the Examiner’s rejection of claims 1-5, 10, 11, 13, and 14 as unpatentable under 35 U.S.C. § 103(a) over Jeffay, Palmer and Bulterman. Finally, Owner does not appeal or argue the Examiner’s rejection of claims 18 and 19, variously, under either 35 U.S.C. § 101 and/or § 112. We therefore summarily affirm the Examiner’s rejection of claims 18 and 19. Requester’s Appeal Among the multiple rejections proposed by Requester, we focus our attention on the Examiner’s failure to adopt the rejection of claims 1-17 under 35 U.S.C. §103(a) as unpatentable over Kappe, HyperCard and QuickTime. Notably, in response to another proposed rejection of claims 1-17 under 35 U.S.C. §102(b) as anticipated by Kappe, the Examiner expressed the opinion that Kappe disclosed “document clusters” rather than “multimedia documents.” RAN 4. The Examiner found this critical, and took the position that Kappe therefore failed to disclose “multimedia documents” wherein “structural relationships among the plurality of components form a basis for at least spatial layout.” Id. at 5. Thereafter, in setting forth the basis for not adopting the proposed rejection of claims 1-17 under 35 U.S.C. §103(a), as unpatentable over Kappe, HyperCard and QuickTime, the Examiner asserted that the references to HyperCard and QuickTime were merely duplicative of the teachings of Kappe. Id. at 6-7. We disagree. In the related appeal 95/001,649, cited above, we found that Kappe indeed discloses multimedia documents that may be created, Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 14 accessed, and played back. In describing document clusters, as opposed to multimedia documents, Kappe notes that a document cluster “is actually a number of documents of possibly different document types that are semantically related.” Kappe, p. 19. Kappe also discloses that the documents may include video (digital movies, see p. 95; or “Hyper-animation,” see p. 101). Further, in reviewing the ’132 patent Specification, we find that “multimedia documents” are described as a “collection of individual components in multiple media combined with an over-all structure and timing component that captures the identities, detailed dependencies, references to, and relationships among the various other components” which can be independently viewed, executed and stored by respective independent applications based upon the different file types.” ’132 Specification, col. 27, ll. 57-58, col. 28, ll. 1-29; and Fig. 30. Thus, under Owner’s own definition, we find that Kappe’s “document clusters” qualify as “multimedia documents,” as set forth in Claim 1. QuickTime and HyperCard also disclose systems for providing access to interactive multimedia documents, including video. See QuickTime, p. 488, Chapter 4 and HyperCard, p. 10, Chapter 52. These references disclose simultaneously providing access to a first client device and a second client device for editing, as claimed. For example, Kappe discloses communication between the Hyper-G system and remote terminals utilizing various networks. Kappe, §2.2.3.1.1. HyperCard discusses a method of capturing and presenting information utilizing multiple media. HyperCard, p. 753. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 15 The spatial layout of the components of a multimedia document, as recited in Claim 1, is taught by Kappe’s illustration at Figure 2.3 where text and image are depicted in a particular arrangement. Figures 7-10 of HyperCard disclose the spatial layout of multiple objects within various layers. Thus, both references disclose an “order of presentation.” With respect to the claimed editing and annotation of multimedia documents, Kappe discloses annotations at §2.2.3.8, describing the ability of an author to add public or private information to a document. Additionally, Kappe discloses providing access to others (third client devices) of the document and the annotations. Kappe, p. 27. As for the claimed “storage interface,” Kappe teaches the use of CD- ROMS, Video or Audio Discs and Tapes, clearly describing various implementations of collection databases. Kappe, p.18, 51. Access to the multimedia documents is provided, within Kappe, by work stations attached to a high speed LAN. Kappe, p. 122. This access is capable of providing access by multiple devices, as set forth in claim 1. As for the claimed utilization of IP protocols, we note that during prosecution of the ’132 patent, the Examiner noted that the IP protocol was an old and well known protocol used for transmitting data across networks. Claim 1 also sets forth the provision of simultaneous access to edited multimedia documents and the enabling of the transfer of video portions of the multimedia documents. Requester suggests that this feature is disclosed by the Kappe “Electronic Classroom” where multiple students may view and manipulate documents within the system. We agree. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 16 Finally, with respect to the “decompression modules” set forth in claim 1, we note that QuickTime expressly teaches image compression and decompression “on the fly,” which we find meets the claimed feature. QuickTime 49, 59. In summary, for the reasons set forth above, we find that the combination of Kappe, HyperCard, and QuickTime discloses the invention set forth in Owner’s Claim 1. With respect to claims 2-17, we have reviewed the Requester’s assertion that claims 2-17 were rendered obvious by Kappe in view of HyperCard and further in view of QuickTime, as set forth in the Request for Reexamination, at pages 43 et seq., as well as the claim analysis set forth within Exhibit CC-K2, attached thereto. We agree with Requester’s conclusions set forth therein. We adopt as our own the conclusions and reasons asserted by the Requester, as noted explained above. Consequently, we find claims 2-17 are unpatentable 35 U.S.C. §103(a), over Kappe, HyperCard and QuickTime. DECISION We sustain the Examiner’s rejections of claims 1-5 and 10-14 under 35 U.S.C. § 103(a) as unpatentable over Roseman, Hopper, and Adie, as well as the rejection of claims 1-5, 10, 11, 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Jeffay, Palmer, and Bulterman. We enter a new ground of rejection under 37 C.F.R. 41.77(b) of claim 1-17 as obvious over Kappe, HyperCard, and QuickTime. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 17 In view of our conclusion that the Examiner did err in failing to reject claim 1-17, based on Kappe, HyperCard and QuickTime, we do not address any of the other rejections which are asserted by Requester. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) . AFFIRMED-IN-PART This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH 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. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 18 (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board’s opinion reflecting its decision to reject the claims and the patent owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The Examiner, after the Board's entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board's rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 19 § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). Appeal 2014-002047 Reexamination Control 95/001,648 Patent US 7,730,132 B2 20 Patent Owner: REED SMITH LLP 1301 K Street, N.W. Suite 1100 – East Tower Washington, DC 20005 Third Party Requester: STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 Copy with citationCopy as parenthetical citation