Ex Parte Rhoads

Board of Patent Appeals and Interferences

Apr 28, 2010

11382855 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte GEOFFREY B. RHOADS 8
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10
Appeal 2009-005433 11
Application 11/382,855 12
Technology Center 3600 13
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Decided: April 28, 2010 16
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge.21
DECISION ON REQUEST FOR REHEARING22
Appeal 2009-005433
Application 11/382,855

2
STATEMENT OF THE CASE 1
The Appellant filed a REQUEST FOR REHEARING on February 24, 2010. 2
The Examiner rejected claims 1-3 and 6 under 35 U.S.C. § 112, second paragraph, 3
claims 1, 6-12, 15, 16, and 19 under 35 U.S.C. § 103(a) as unpatentable over Stefik 4
and Sims, and claims 2-5, 13, 14, 17, 18, and 20 under 35 U.S.C. § 103(a) as 5
unpatentable over Stefik, Sims, and Takahashi. We reversed these rejections and 6
entered a new ground of rejection under 35 U.S.C. § 103(a) as unpatentable over 7
Stefik and Takahashi against claims 1, 11, 15, and 16 in our December 24, 2009 8
Decision. The Appellant seeks reconsideration of the new ground of rejection. 9
10
We DENY the REQUEST FOR REHEARING. 11
12
ISSUES 13
The issue pertinent to this request is whether the Appellant has sustained the 14
burden of showing that we erred in entering the new grounds of rejection. 37 15
C.F.R. 41.52(a)(3). 16
The pertinent issue turns on whether Takahashi describes determining whether 17
to perform an operation based on the type of output with which the device is 18
equipped. 19
ANALYSIS 20
We found in our decision 21
The Appellant has sustained the burden of showing that the Examiner 22
erred in rejecting claims 1-3 and 6 under 35 U.S.C. § 112, second 23
paragraph, for indefinite for failing to particularly point out and 24
Appeal 2009-005433
Application 11/382,855

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distinctly claim the subject matter which the Appellant regards as the 1
invention. 2
The Appellant has sustained the burden of showing that the Examiner 3
erred in rejecting claims 1, 6-12, 15, 16, and 19 under 35 U.S.C. § 4
103(a) as unpatentable over Stefik and Sims. 5
The Appellant has sustained the burden of showing that the Examiner 6
erred in rejecting claims 2-5, 13, 14, 17, 18, and 20 under 35 U.S.C. § 7
103(a) as unpatentable over Stefik, Sims, and Takahashi. 8
A new ground of rejection is entered 37 C.F.R. § 41.50(b) in which 9
claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Stefik and Takahashi. 11
Decision 14-15. 12
The Appellant argues the Board misapprehended Takahashi in that Takahashi 13
fails to describe determining whether to perform an operation based on the type of 14
output the device is equipped with. Request 1-2. The Appellant contends that 15
Takahashi only describes a single device that always includes decoded and digital 16
outputs. Request 2. The Appellant agrees that once the determination of the data 17
type is made, different outputs can be involved, however, contend that the output 18
types are not used in the determination step. Request 2. 19
We begin by pointing out that claims 1, 11, 15, and 16 require determining 20
whether to perform an operation based on the type of output with which the device 21
is equipped. This limitation does not require any specific number of output types 22
or not having fixed output types, as alleged by the Appellant. Request 1-2. 23
Although Takahashi only describes the output types of decoded, digital, or both 24
(Decision: p 8, FF 10-11), there is nothing recited in the claim language that 25
requires Takahashi to describe additional, different, or non-fixed output types. 26
Furthermore, Takahashi makes a determination of whether to provide the user with 27
the data (i.e. a determination to perform an action) based on whether the user has 28
Appeal 2009-005433
Application 11/382,855

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permissions and rights for that type of output (Decision: p 8, FF 10-11). That is, 1
the determination of whether to perform the action is based on whether the user has 2
permission for that operation to be performed. As such, Takahashi describes 3
determining whether to perform an operation based on the type of output the 4
device is equipped with and the Appellant’s arguments are not found persuasive. 5
For the above reasons we are not convinced of reversible error in our decision. 6
Accordingly, the Appellant’s request for rehearing is denied. 7
8
DECISION 9
To summarize, our decision is as follows: 10
• We have considered the REQUEST FOR REHEARING 11
• We DENY the request that we reverse our rejections as to claims 1, 11, 15, 12
and 16, under 35 U.S.C. § 103(a) as unpatentable over Stefik and Takahashi. 13
• The new ground of rejection pursuant to 37 C.F.R. § 41.50(b) of claims 1, 14
11, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Stefik and 15
Takahashi remains entered. 16
17
DENIED 18
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mev 22
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DIGIMARC CORPORATION 24
9405 SW GEMINI DRIVE 25
BEAVERTON OR 97008 26
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