Ex Parte RE39038 et al

Patent Trial and Appeal Board

Dec 12, 2014

90012220 (P.T.A.B. Dec. 12, 2014)

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.
90/012,220 03/30/2012 RE39038 FLEMREEX-038 5282
28422 7590 12/12/2014
HOYT A. FLEMING III
P.O. BOX 140678
BOISE, ID 83714
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/12/2014 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
____________

Ex parte HOYT A. FLEMING, III
Appellant, Patent Owner
____________

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Technology Center 3900
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Before KEN B. BARRETT, MICHAEL W. KIM,
STANLEY M. WEINBERG, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges. 1

KUMAR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
BACKGROUND
In our Decision on Appeal dated April 11, 2014 (“Decision”), we
affirmed the Examiner’s rejection of claims 1–6, 8, 18, 25, and 26 of the
’038 patent under 35 U.S.C. § 102 based on different reasoning from that of
the Examiner and denominated our affirmance as New Grounds of Rejection
under 37 C.F.R. § 41.50(b). Decision 5.

1 Administrative Patent Judge Joseph F. Ruggiero was on the original panel
that decided this case, but has retired. Judges Weinberg, Barrett, and Kim
have been added to the merits panel.
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Patent Owner requests rehearing of our Decision under 37 C.F.R.
§ 41.52. Request for Rehearing (“Req. Reh’g”) dated June 8, 2014.
The applicable standard for a request for rehearing is set forth in
37 C.F.R. § 41.52(a)(1) (2012), which provides in relevant part, “[t]he
request for rehearing must state with particularity the points believed to have
been misapprehended or overlooked by the Board.”
We reconsider our Decision in light of Patent Owner’s Request for
Rehearing and we grant rehearing in part.
ANALYSIS
First Issue:
Patent Owner contends the basis for the affirmance of the Examiner’s
rejection of claims 1–6, 8, 25, and 26 “was the (legally erroneous) premise
that the conditional step was not entitled to patentable weight” (Req. Reh’g
6), and specifically contends:
Element (c) of claim 1 requires “generating an alert if the
position of the device is not within a predetermined distance of
a predetermined position”. Thus, element (c) is a conditional
step recitation. In affirming the rejection, the Board stated:
“conditional steps employed in a method claim need not
be found in the prior art if, under the broadest scenario,
the method need not invoke the steps . . . . Therefore,
because the performance of step (c) is conditional on an
event that may not occur, step (c) is optional and is not
entitled to patentable weight.”
(Decision, pp. 3-4 (internal citations omitted.) Thus, the Board
construed the condition step element to be an optional step
entitled to no patentable weight.
To the contrary, the Federal Circuit’s decision in Altiris,
Inc. v. Symantec Corp held that a conditional step “must be
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performed” in order to meet the claim. 318 F.3d 1363, 1370-72
(Fed. Cir. 2003). In Altiris, the method claims recited that “if
said testing step indicates a normal boot sequence” then the
computer boots normally. The Court found that the conditional
step recitation must be given patentable weight. Id.
Req. Reh’g 3.
As an initial matter, we note that we did not and do not hold
that every conditional step recitation in a method claim2 is not entitled
to patentable weight. We simply construe the claim at issue in this
case by giving it the broadest reasonable construction consistent with
the specification.
Patent Owner relies upon Altiris and contends “[t]he Court found that
the conditional step recitation must be given patentable weight.” Id. We
disagree with the Patent Owner’s suggestion that the Court held that all
conditional claims must be given patentable weight, because Altiris was not
concerned with whether the conditional step must be given patentable
weight. Instead, the issue in Altiris was whether the District Court properly
construed the claim. Altiris, 318 F.3d at 1365–66 (“the trial court erred in
the construction of each of the five claim limitations”). More specifically, in
Altiris, the issue was whether certain steps must occur in a specific order.
See id. at 1369–70 (“The district court held that, even though the claims did
not recite a specific order, the ‘setting’ step must occur after the ‘testing
automatically’ step and before the “booting normally’ step. . . . First, we

2 We also do not reach the issue as to whether the outcome would be
different had the claim at issue been to a system or apparatus capable of
generating an alert in a manner similar to that of step (c) here. See, e.g. Ex
Parte Katz, 2010-006083, 2011 WL 514314, at *6 (BPAI 2011).
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look to the claim language to determine if, as a matter of logic or grammar,
they must be performed in the order written. . . . If not, we next look to the
rest of the specification to determine whether it ‘directly or implicitly
requires such a narrow construction.’” (citations omitted)).
Against this issue, case law discussion, and claim analysis, the Court
in Altiris concluded “[t]he only order mandated by the claim language is the
conditional language in several of the steps, indicating that they must be
performed after the ‘testing’ step.” Id. at 1370.
As discussed in our original Decision, conditional steps employed in a
method claim need not be found in the prior art if, under the broadest
reasonable construction, the method need not invoke the steps. Decision 3–
4; see Katz, 2011 WL 514314, at *4 (citing In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). In this case, step (c) does not
require, as Patent Owner urges, “a threshold distance algorithm that a [sic]
compares two specific distances.” Reply Br. 3. There is no comparison step
or calculation step or recitation of an algorithm. Patent Owner’s arguments
therefore are not commensurate in scope with the broader claim language.
Patent Owner also contends that element (c) requires generating an alert “if”
the position of the device is not at the recited location. Req. Reh’g 5. Patent
Owner does not contend that element (c) requires generating an alert under
all circumstances; for example, if the position of the device is at the recited
location. Under the broadest reasonable interpretation of the claim, when
the “detecting” and “determining” actions of steps (a) and (b) are performed
and the position of the device is within a predetermined distance of a
predetermined position (i.e., the condition is not present), the method
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concludes and the prior art need not disclose “generating an alert” to render
the claim unpatentable. Referring to the diagrams on page 8 of Patent
Owner’s Brief, the claimed method is satisfied when steps (a) and (b) are
performed and the automobile is less than ½ mile (the predetermined
distance of the example) from the Food Mart (the predetermined position of
the example) because the condition precedent for the performance of step (c)
is not present. In light of the above, we decline to change the result of our
Decision with regard to the anticipation rejection of claims 1–6, 8, 25, and
26.
Second Issue:
Patent Owner contends, “In light of the controlling Federal Circuit
precedent, claim 18 must be interpreted to require a separate and distinct
microprocessor, detector circuit, and GPS receiver.” Req. Reh’g 8. In
particular, Patent Owner contends:
The Federal Circuit and the Board have consistently held
that a single item cannot meet two separately claimed elements,
especially when the claim specifically recites a particular
relationship between the two elements. In 2010, the Federal
Circuit clarified the construction of separate claim elements.
Specifically, the Federal Circuit held:
Claim 1 lists four separate elements: 1) a needle, 2) a
guard that rides on the needle, 3) a hinged arm attached
to the guard, and 4) a spring means ‘connected to’ the
hinged arm. Where a claim lists elements separately, ‘the
clear implication of the claim language’ is that those
elements are ‘distinct component[s]’ of the patented
invention.
Req. Reh’g 7 (quoting Becton, Dickinson and Co. v. Tyco Healthcare
Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)).
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We note the Request for Rehearing is raising arguments that were not
raised previously in either the Appeal Brief or the Reply Brief.
As the Board has found, “[t]he failure to raise all issues and
arguments diligently, in a timely fashion, has consequences,” and thus, such
newly-raised arguments are technically waived. Ex parte Borden, 93
USPQ2d 1473, 1475 (BPAI 2010) (informative decision); see also id. at
1474 (“[T]he 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.”). Cf. Kaufman Company v. Lantech,
Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986) and McBride v. Merrell Dow
and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
Further, § 41.52(a)(1) states, “The request for rehearing must state
with particularity the points believed to have been misapprehended or
overlook by the Board. Arguments not raised, and [e]vidence not previously
relied upon . . . are not permitted in the request for rehearing except” for
certain situations that do not apply here.
We note that, although Patent Owner added additional arguments in
the Reply Brief regarding claim 18 in an attempt to cure the noted
deficiencies in the Appeal Brief, because Patent Owners’ arguments could
have been raised in the Appeal Brief but Patent Owner failed to do so, we
deemed the arguments technically waived. To the extent that Patent Owner
presents supplemental or new arguments in the Request for Rehearing, not in
response to the new ground of rejection designated in the Decision, such
arguments at this stage of the prosecution are inappropriate and will not be
considered.
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In view of the above, we decline to make any changes in our Decision
with regard to the anticipation rejection of claim 18.
CONCLUSIONS
In view of the foregoing discussion, we decline to make any changes
in the Decision mailed April 11, 2014 regarding the rejection of claim 18.
Accordingly, the Request for Rehearing is denied as to claim 18.
To the extent that our reasoning herein regarding claim 1 differs from
that in our Decision, we designate this Decision on Request for Rehearing as
containing a new ground of rejection of claim 1 in order to be completely
fair to Patent Owner and to permit Patent Owner to address the reasoning.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Patent Owner, WITHIN
TWO MONTHS 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. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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REHEARING GRANTED-IN-PART
37 C.F.R. § 41.50(b)

msc

For Patent Owner:

HOYT A. FLEMING III
P.O. BOX 140678
BOISE, ID 83714

For Third Party Requester:

THOMAS W. HUMPHREY, ESQ.
WOOD HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OHIO 45202-2917