Ex Parte Morsa

Board of Patent Appeals and Interferences

Dec 5, 2011

09832440 (B.P.A.I. Dec. 5, 2011)

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.
09/832,440 04/11/2001 Steve Morsa 7403
91100 7590 05/31/2012
Steve Morsa
PO Box 1996
Thousand Oaks, CA 91358
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
05/31/2012 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 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte STEVE MORSA 8
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Appeal 2011-007576 11
Application 09/832,440 12
Technology Center 3600 13
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and 17
ALLEN R. MACDONALD, Administrative Patent Judges. 18
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CRAWFORD, Administrative Patent Judge. 20
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DECISION ON REQUEST FOR REHEARING 23
STATEMENT OF THE CASE 24
Appellant filed a second Request for Reconsideration asking that we 25
reconsider our Decision on Appeal (mailed May 27, 2011) and our Decision 26
on Request for Rehearing (mailed December 6, 2011). 27
Appeal 2011-007576
Application 09/832,440
2

In the Decision on Appeal we affirmed the Examiner's rejection under 1
35 U.S.C. § 102(a) of claims 271 and 272 and affirmed the Examiner's 2
rejection under 35 U.S.C. § 103(a) of claims 181, 184, 188 to 192, 196, 197, 3
200 to 203, 206, 210 to 214, 218, 219, 222 to 225, 228, 232 to 236, 240, 4
241, 244 to 247, 250, 254 to 258, 262, 263, and 266 to 268. In our Decision 5
on Request for Reconsideration we granted the request to denominate our 6
affirmance of claims 181, 192, 196, 197, 201, 202, 203, 214, 218, 219, 223, 7
224, 225, 228, 232 to 236, 240, 241, 244 to 247, 250, 254, 258, 262, 263, 8
267 and 268 as a new ground of rejection. We declined to make any other 9
changes to our Decision. 10
Appellant repeats arguments made in the Appeal Brief, Reply Brief 11
and first Request for Rehearing. We will not make any changes in response 12
to these arguments for the reasons explained in the Decision and the 13
Decision on Request for Rehearing. In particular, we direct the Appellant’s 14
attention to our Decision at pages 3 to 4 and our Decision on Rehearing at 15
page 2 to 4 for our discussion in regard to the arguments made in regard to 16
the PMA reference. 17
We will likewise not make any changes to our Decision in regard to 18
the argument regarding secondary considerations. We direct the Appellant’s 19
attention to our discussion of secondary considerations at pages 9 to 10 of 20
the Decision and page 5 of the Decision on Request for Rehearing. 21
In regard to the rejection designated as a new ground of rejection in 22
the Decision on Request for Rehearing, the Appellant argues that we erred 23
because we did not treat each of the claims differently. 24
The group of claims that were subject to the new ground of rejection 25
have subject matter that is directed to a specific type of data. We held that 26
the type of data recited in the claims does not patentably distinguish the 27
Appeal 2011-007576
Application 09/832,440

3
claims . As such, we discussed the claims which included the recitation of a 1
specific type of data together because these claims all dealt with the issue of 2
whether the recitation of a specific type of data is non-function descriptive 3
material. 4
The Appellant also argues that the subject matter of these claims 5
which relates to the type of data is not analogous to printed matter and as 6
such is not non-functional descriptive material. We direct the Appellant’s 7
attention to our discussion on page 5 of the Decision on Rehearing and pages 8
7 to 8 of the Decision. In this regard, while the data is used in the method, 9
the type of data, i.e., human versus non-human and the content of the 10
messages does not alter the method steps recited in claim 181, for example. 11
As such, we are not convinced of error in our Decision in this regard. 12
On the record before us, we are not convinced that we overlooked or 13
misapprehended any points. 14
The request is denied. 15
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DENIED 17
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mls 19