Ex Parte Rouse et al

Patent Trial and Appeal Board

May 31, 2017

09750320 (P.T.A.B. May. 31, 2017)

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.
09/750,320 12/29/2000 Andrew Rouse LOT920000043US1_8150-0242 6988
52021 7590 06/02/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
JAIN, ANKUR
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW ROUSE, QUINTON ZONDERVAN,
THOMAS BENTLEY, TIMOTHY LAWSON, and
CHRISTOPHER HEROT
Appeal 2014-001763
Application 09/750,320
Technology Center 2600
Before DENISE M. POTHIER, DAVID M. KOHUT, and
JENNIFER S. BISK, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellants have submitted a timely
Request for Rehearing dated May 15, 2017 (hereafter the “Request”),
requesting rehearing of the March 15, 2017 Decision on Appeal (hereafter
the “Opinion” or “Op.”) reversing the Examiner’s rejection of claims 38, 39,
and 41—44 under § 101 and affirming the rejections of claims 21, 22, 24—30,
32-35, 37-39, and 41^14 under § 103(a). Op. 11.
We have reconsidered the Opinion in light of Appellants’ comments
in the Request. To the extent indicated below, we grant the Request.
Regarding claim 21, Appellants contend the panel’s findings related to
Ulrich are not supported by the reference. Request 2—3 (citing Ulrich
Appeal 2014-001763
Application 09/750,320
14:15—19). In particular, Appellants argue a specific file converter (e.g.,
how the file is formatted) as disclosed by Ulrich “is neither explicitly nor
inherently the same as a device type of a wireless client device.” Request 3.
Appellants assert that “a file format has no necessary connection to a
‘particular mobile device, ’ as alleged by the Board” and, thus, the panel
misapprehended or overlooked the argument that the profile does not refer to
a device type. Id. We disagree.
The Opinion specifically addresses the argument as to whether Ulrich
teaches the disputed “profile of the wireless client device includes a device
type of the wireless client device” in claim 21, and, thus, the argument was
not overlooked. Op. 7—8 (citing to App. Br. 27; Reply Br. 5).
Regarding the disputed “profile,” Appellants contended in the Appeal,
similar to the Request, that the discussed profile in Ulrich’s column 14 “does
not refer to a device type of the wireless client device, as claimed.” App. Br.
27. To this point, we clarity that the Specification does not define the
phrase, “device type.” As such, the recited “profile of the wireless client
device includes a device type” in claim 21 is given its broadest, reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” See In re Am. Acad, of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (internal citations omitted).
The Appeal Brief points to pages 31 and 33 of the Specification for
support of the claim language “device type.” App. Br. 3 (citing Spec.
31:15—16 and 33:14—18). The disclosure (1) discusses a digest containing
attachments with names in a format which include a device type and (2)
describes the device type separately from a device model. See Spec.
31:15—16. Furthermore, the disclosure addresses that the invention supports
2
Appeal 2014-001763
Application 09/750,320
various device types so that information may be viewed properly regardless
of the type of the mobile device being used. Id. at 33:14—18. However,
these passages fail to address what is a “profile [that] includes a device type”
or how a device type is represented in the profile. Dependent claim 27,
which was added during prosecution, recites specific device types. App. Br.
36 (Claims App’x.). But, due to the principles of claim differentiation,
claim 21 is broader in scope than claim 27.
The disclosure also discusses an “appropriate device type/device
model file” {id. at 31:19) as well as a generic device type file {id. at 31:19—
20). Once again, no example of a profile that includes a device type is
provided. See id. The Specification states a relevant or single style sheet
may be included in the appropriate or generic device type file, providing
minimal guidance as to what is contained within these device type file. Id.
at 31:20-32:2. Nor do Appellants provide us supporting evidence of what
an ordinary artisan would have understood “a device type” as claimed to
encompass. See Request 2—3.
Accordingly, we construe the language “wherein the profile of the
wireless client device includes a device type” in light of the disclosure as it
would have been interpreted by one skilled in the art to include a profile that
contains information that relates to a type of device— whether specifically
or generically— so that information can be properly viewed.
In response to Appellants’ argument related to the disputed “profile of
the wireless client device includes a device type,” the Opinion indicates
Ulrich teaches a user can set “profile parameters which indicate
that a specific file converter is to be invoked to convert any
attachment to be transferred to mobile device 3 into a format that
is understandable by the device.” Ulrich 14:15—18. Ulrich thus
teaches, when combined with Kobayashi, that the formatting of
3
Appeal 2014-001763
Application 09/750,320
an “application output associated with the at least one selected
application action” as recited in claim 21 is based on profile
parameters that indicate a specific file converter, which makes
the attachment understandable by a particular mobile device.
See id.
Op. 7-8.
Given the above statements discuss what Ulrich teaches, the Opinion
did not determine Ulrich inherently discloses the recited language of “profile
of the wireless client device includes a device type of the wireless client
device” as argued. See Request 3 (stating “a profile indicating that a . . . file
converter is needed does not necessarily (i.e., inherently) identify a
‘particular’ mobile device, as alleged by the Board”). That is, the Opinion
articulates the affirmed rejection does not rely on the concept of inherency.
Op. 8—9 (indicating that the rejection relies on what is obvious to one skilled
in the art and provides a line of reasoning to combine Ulrich with
Kobayashi).
Additionally, Ulrich teaches a profile having parameters that indicate
a specific file converter to be used for converting attachments sent to the
mobile device into a format understandable by the device. Ulrich 14:15—18,
cited in Op. 7. An ordinarily skilled artisan, employing their background
knowledge and creative inferences, would have recognized from this
discussion in Ulrich (Ulrich 14:15—18) that Ulrich’s profile parameters
contain information that not only relates to the device, but also a device type
(e.g., devices that understand a specific format indicated through file
converter information) so that the information can be properly viewed (i.e.,
understandable). See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Without this indication of the type of device through the profile’s
parameters, the specific device taught in Ulrich would not be able to convert
4
Appeal 2014-001763
Application 09/750,320
and view attachments. See Ulrich 14:15—18. The rejection also highlights
this teaching in Ulrich when stating, “[wjithout this suggestion, the
parameters would not be understood by the mobile device.” Ans. 5
(emphasis omitted). Ulrich therefore teaches a relationship between the
profile parameters and a device type (e.g., devices that understand a specific
format), contrary to Appellants’ arguments. See Request 3.
Appellants additionally assert that the word “‘particular’ [discussed in
the Opinion] is not found in the Examiner’s cited passage with Ulrich.”
Request 3. As stated in the Opinion, “identity of terminology between prior
art and the claim language is not required to teach or suggest the limitations
in claims. See, e.g., In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” Op. 8.
Furthermore, the Federal Court indicates an obviousness “analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. The above discussion, as well as the Opinion, explain how Ulrich
suggests to ordinary artisans, employing their background knowledge and
creative inferences, a “profile of the wireless client device [that] includes a
device type of the wireless client device.” We refer above for more details
and disagree with Appellants’ contention that the rejection relies on common
sense to supply a missing feature. See Request 4—5.
The panel, therefore, did not misapprehend the arguments concerning
the limitation “wherein the profile . . . includes a device type of the wireless
client device” in claim 21.
Turning to claim 27, Appellants assert that our finding concerning
Appellants’ traversal of the Examiner’s taking of Official Notice is “an
5
Appeal 2014-001763
Application 09/750,320
undesignated new grounds of rejection.” Request 5. This argument is
unavailing. Our determination related to what Appellants did or did not
traverse is not a new fact or legal argument of the § 103(a) rejection as
presented. Instead, as noted, Appellants did not advance a sufficient
traversal concerning claim 27. See Op. 9-10.
Importantly, Appellants have never stated on the record or provided
evidence that the Examiner’s statement of “it is notoriously well known in
the art to indicate the type of mobile devices within the profile that is
forwarded to another device so that another device could identify which
device has been connected” (Final Act. 8)1 is not common knowledge in the
art. App. Br. 31; Reply Br. 7. In the Brief, Appellants specifically contest
that the Examiner has not presented evidence for or established that these
facts were known “at the time of the invention.” App. Br. 31. We address
this contention in the Opinion. Op. 9—10 (noting “we understand such
findings by the Examiner were considered from the perspective of the time
of the invention”). Accordingly, we did not overlook or misapprehend
Appellants’ arguments related to claim 27.
Appellants also contend that reliance on the Manual of Patent
Examining Procedure (MPEP) § 2144.03 is misplaced and that the MPEP is
not law. Request 6—7. To be sure, the MPEP does not have the effect of
law. Refac Int’l, Ltd., v. Lotus Dev. Corp., 81 F.3d 1576, 1584 n.2 (Fed. Cir.
1996) (indicating that “[t]he MPEP does not have the force and effect of
law”). “[Hjowever, it is entitled to judicial notice as the agency’s official
interpretation of statutes and regulations, provided that it is not in conflict
1 The Examiner took Official Notice as far back as September 8, 2008. Final
Act. 6 (mailed Sept. 8, 2008).
6
Appeal 2014-001763
Application 09/750,320
with the statutes or regulations.” Id. (internal citations omitted). Appellants
have not provided persuasive evidence of such a conflict. See Request 5—8.
The Opinion further relies on In re Chevenard, 139 F.2d 709, 713
(CCPA 1943). This case holds “[i]n the absence of anything in the record to
contradict the examiner's holding, and in the absence of any demand by
appellant for the examiner to produce authority for his statement, we will not
consider th[e] contention.” Id.2 As noted above, Appellants have not
provided us with sufficient evidence in the record to contradict the
Examiner’s taking of Official Notice of the above-noted findings. Op. 9—10.
Given the record, Appellants’ traversal is not sufficient.
Appellants further contend that the MPEP’s reliance on Chevenard
“constitutes impermissible burden shifting.” Request 8 (emphasis omitted).
We disagree. In the Opinion, we cited to In reAhlert, 424 F.2d 1088, 1091
(CCPA 1970) (Op. 9), which permits the Examiner to take Official Notice of
certain facts without documentary evidence to fill in gaps in supporting a
particular ground of rejection. As such, a prima facie case of obviousness
can be established using Official Notice’s facts. Additionally, the Office
needs to show by a preponderance of the evidence unpatentability of claims.
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). As
explained here and in the Opinion (Op. 9-10), the Office has satisfied this
standard.
Even so, the rejection and Opinion cite to evidence from Kobayashi
and Ulrich concerning claim 27’s limitations and why one skilled in the art
would have incorporated the recited “device type” information into the
2 These concepts have been reinforced subsequently by a later court. Cf. In
re Soli, 317 F.2d 941, 946 (CCPA 1963).
7
Appeal 2014-001763
Application 09/750,320
recited profile. See Op. 9-10 (citing Final Act. 8; Ans. 8, 13, and Kobayashi
Fig. 9). Ulrich suggests the recited profile “includes a device type,” such as
devices that use a particular format understandable to the devices. Ulrich
14:15—18. We refer above for more detail. Although Ulrich does not teach
the specific “device type” in claim 27 (i.e., “one or more of a data-capable
wireless phone, an interactive pager, and a personal digital assistant”), the
rejection cites Kobayashi’s Figure 9, which demonstrates that such device
types (e.g., a data-capable wireless phone 2) were known in the art. See
Ans. 8; Op. 10. When combining Ulrich and Kobayashi, the resulting
system suggests to an artisan a profile parameter that not only includes
device type information but also identifies the device type as a data-capable
wireless phone, such as a specific file format understandable by data-capable
wireless phone devices, so that the receiving data-capable wireless phone
can identify the proper file format converter to make attachments
understandable to the device. See Op. 10. We, thus, disagree that the
findings concerning Kobayashi do not “correspond^ to . . . the limitations at
issue.” Request 10.
Because our analysis or rationale in this instance changes the thrust of
the rejection presented by the Examiner (see Request 2), we designate the
rejection of claims 21 and 27 a new ground of rejection based on Kobayashi
and Ulrich under 35 U.S.C. § 103(a). The rejection of independent claims
28, 33 and 38, which recite similar “profile” claim language to claim 21, is
also designated a new ground of rejection based on Kobayashi and Ulrich
under 35 U.S.C. § 103(a). Due to their dependency from one of claims 21,
28, 33, and 38, the rejection of claims 22, 26, 29, 30, 32, 34, 35, 37, 39, 43,
and 44 based on Kobayashi and Ulrich under 35 U.S.C. § 103(a) is further
8
Appeal 2014-001763
Application 09/750,320
designated a new ground. For the same reasons, the rejection of dependent
claims 24, 25, 41, and 42 based on Kobayashi, Ulrich, and Criss under 35
U.S.C. § 103(a) is designated a new ground.
We have considered the arguments raised by Appellants in the
Request. Based on the record before us now, we are still of the view that
claims 21, 22, 26—30, 32—35, 37—39, 43, and 44 are unpatentable under
§ 103(a) based on Kobayashi and Ulrich and claims 24, 25, 41, and 42 are
unpatentable under § 103(a) based on Kobayashi, Ulrich, and Criss. We,
however, designate these rejections as new grounds under 37 C.F.R.
§ 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
9
Appeal 2014-001763
Application 09/750,320
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
GRANTED;
37 C.F.R, 41.50(b)
10