Ex Parte RE39038 et al

Patent Trial and Appeal Board

Apr 11, 2014

90012220 (P.T.A.B. Apr. 11, 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 04/11/2014
HOYT A. FLEMING III
P.O. BOX 140678
BOISE, ID 83714
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/11/2014 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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Reexamination Control 90/012,220
Patent US RE39,038 E1
Technology Center 3900
____________________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued March 28, 2006 to Fleming (hereinafter “’038 patent”).
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The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from
the Examiner’s decision to adopt Requester’s rejection of claims 1-6, 8, 18,
25, and 26 in the subject reexamination. Claims 7, 23, 27, and 28 have been
found to be patentable (Advisory Action mailed Jun. 11, 2013; Final Rej. 1-
5), and claims 45-48 have been cancelled (App. Br. 34-37).2 We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM the rejections and denominate our affirmance as New
Grounds of Rejection under 37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed March 30, 2012, by Thomas W. Humphrey, Esq.
Representative independent claims 1 and 18 read as follows:
1. A method, executed by a device having a position, of
generating an alert to an incoming radar signal having a
frequency and a signal strength, the method comprising the acts
of:
(a) detecting the incoming radar signal;
(b) determining the position of the device that detected
the incoming radar signal; and
(c) generating an alert if the position of the device is not
within a predetermined distance of a predetermined position.

18. A radar detector for alerting an operator of a motor
vehicle to an incoming police radar signal comprising:
(a) a microprocessor;

2 We refer to Appellant’s Appeal Brief (“App. Br.”) filed August 10, 2013,
Reply Brief (“Reply Br.”) filed November 2, 2013, the Final Rejection
(“Final Rej.”) mailed March 14, 2013, and the Examiner’s Answer (“Ans.”)
mailed September 9, 2013.
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(b) a circuit coupled to the microprocessor for detecting
the incoming police radar signal; and
(c) a global positioning system receiver coupled to the
microprocessor and operable to provide the microprocessor
with data that indicates the position of the radar detector.

The Examiner rejected claims 1-6, 8, 18, 25, and 26 under 35 U.S.C.
§ 102(b) as being anticipated by Hoffberg (US 6,252,544 B1, Jun. 26, 2001).
Final Rej. 3; Ans. 3-6.

ISSUES
The dispositive issues on appeal are whether the Examiner erred in
finding that Hoffberg discloses:
1. element (c) of claim 1, i.e., “generating an alert if the position of
the device is not within a predetermined distance of a
predetermined position”; and
2. element (c) of claim 18, i.e., “a global positioning system receiver
coupled to the microprocessor and operable to provide the
microprocessor with data that indicates the position of the radar
detector.”

ANALYSIS
Anticipation of Claims 1-6, 8, 18, 25, and 26
Independent claim 1 recites a conditional limitation in connection
with step (c) requiring “generating an alert if the position of the device is not
within a predetermined distance of a predetermined position.” We note
conditional steps employed in a method claim need not be found in the prior
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art if, under the broadest scenario, the method need not invoke the steps. See
Ex parte Katz, 2011 WL 514314, *4 (BPAI 2011) (citing In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). See also MPEP
§ 2111.04 (claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed). 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.
Accordingly, Appellant’s argument contending Hoffberg fails to disclose
element (c) is not commensurate in scope with claim 1 and thereby not
persuasive of Examiner error. Therefore, we affirm the rejection of claim 1
under 35 U.S.C. § 102 as anticipated by Hoffberg.
Regarding independent claim 18, Patent Owner contends that
Hoffberg fails to disclose the GPS receiver and the detector circuit to be
discrete entities that are coupled to the microprocessor. App. Br. 25; Reply
Br. 4. Patent Owner’s arguments are not commensurate in scope with the
broad claim language of claim 18, i.e., the claim language does not recite
“discrete entities.”
Claims 2-6, 8, 25, and 26 depend from claim 1. Patent Owner does
not make any additional arguments with respect to claims 2-6, 8, 25, and 26.
Thus, for this reason and the reasons discussed supra we agree with the
Examiner’s decision to adopt Requester’s proposed rejection of claims 2-6,
8, 25, and 26.

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CONCLUSIONS
For the reasons stated above, we find Patent Owner has not shown the
Examiner erred in rejecting claims 1-6, 8, 18, 25, and 26 under 35 U.S.C.
§ 102. Although we agree that Hoffberg anticipates representative claim 1,
our reasoning differs from that of the Examiner. We therefore designate our
decision as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), to
provide Patent Owner a full and fair opportunity to address this new
rationale.
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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AFFIRMED
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