Ex Parte Noldus

Patent Trial and Appeal Board

Nov 28, 2016

13128722 (P.T.A.B. Nov. 28, 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.
13/128,722 05/11/2011 Rogier Noldus P25422 US1 2939
27045 7590 11/30/2016
F.RTrSSON TNC EXAMINER
6300 LEGACY DRIVE FOUD, HICHAM B
M/SEVR 1-C-ll
PLANO, TX 75024 ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
kathryn.lopez@ericsson.com
michelle. sanderson @ eric sson .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGIER NOLDUS
Appeal 2014-006343
Application 13/128,722
Technology Center 2400
Before DAVID M. KOHUT, LINZY T. McCARTNEY, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our July 27, 2016 decision
(“Decision”) affirming the Examiner’s rejection of claims 1—12 and 14—21.
We grant Appellant’s request and modify the Decision in the manner
discussed below.
Appeal 2014-006343
Application 13/128,722
ANALYSIS
Appellant contends the Decision does not address arguments for
claims 15, 17, 19, and 21 that Appellant raised in the Reply Brief. Req. for
Reh’g 2—3. See also Reply Br. 7—8. Appellant asserts these arguments
were submitted in the Reply Brief as the Examiner
acknowledged in his Answer that the primary reference (Qian)
fails to disclose “wherein the serviced request comprises IMEI
besides the IMSI and wherein said another identifier is the
IMEI”; he relied on further references as teaching^ those
limitations.
Id. at 2.
We agree with Appellant that the Decision does not explicitly address
arguments for claims 15, 17, 19, and 21 that Appellant raised in the Reply
Brief. However, we find Appellant waived these arguments. “[A] reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative);
see also 37 C.F.R. § 41.41(b)(2). “When new issues have been raised by the
Appellant [in a reply brief] ... the Board, unless good cause is shown, will
not consider those new issues.” Borden, 93 USPQ2d 1473, 1476; see also
37 C.F.R. § 41.41(b)(2).
Here, Appellant first presented arguments for claims 15, 17, 19, and
21 in the Reply Brief. Compare App. Br. 3—13, with Reply Br. 7—8; see also
Req. for Reh’g 2. Although Appellant suggests Appellant raised these
arguments in response to the Examiner changing the rejection in the Answer,
see Req. for Reh’g 2, the record reflects otherwise. Contrary to Appellant’s
assertion, the Examiner found in the Final Rejection that Qian does not
disclose “wherein the service request comprises IMEI besides the IMSI and
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Appeal 2014-006343
Application 13/128,722
wherein said another identifier is the IMEI.” Final Act. 3. That the
Examiner reiterated this point in the Answer, see Ans. 10, does not amount
to a change in the rejection. Similarly, to the extent Appellant argues the
Examiner relied on new references in the Answer to address this limitation,
see Req. for Reh’g 2, this argument is not supported by the record before us.
With respect to the limitation quoted by Appellant, the Examiner found
Bleckert teaches or suggests this limitation in both the Final Rejection and
the Answer. Compare Final Act. 3, with Ans. 10.
In sum, Appellant could have challenged the Examiner’s rejections of
claims 15, 17, 19, and 21 in the Appeal Brief, but chose not to. Appellant’s
belated arguments for claims 15, 17, 19, and 21 are not responsive to a
change in the Examiner’s position in the Answer, and Appellant has not
explained why good cause exists for the untimely presentation of these
arguments. Accordingly, Appellant has waived these arguments and we will
not consider the arguments as part of this appeal.
DECISION
We grant Appellant’s request and modify the Decision in the manner
discussed above. We maintain our affirmance of the Examiner’s rejections
of claims 1—12 and 14—21.
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).
REQUEST GRANTED
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