Ex Parte Schimunek et al

Patent Trial and Appeal Board

Jan 30, 2015

12135150 (P.T.A.B. Jan. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GOTTFRIED SCHIMUNEK, JAROSLAW MISZCZYK,
BRENT J. BAUDE, and ROBERT A. BITTNER
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Appeal 2012-004684
Application 12/135,150
Technology Center 2100
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Before JEAN R. HOMERE, CARLA M. KRIVAK, and
STANLEY M. WEINBERG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
In papers filed January 05, 2015, Appellants requested a rehearing
under 37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the
Patent Trial and Appeal Board (Board), dated November 03, 2014. In the
Decision, we affirmed the Examiner’s rejection of claims 1-25. Dec. 6.
ANALYSIS
In the Request for Rehearing (“Request”), Appellants allege the Board
erred by misapprehending or overlooking Appellants’ arguments concerning
claims 2, 4, 5, 9, 11, 12, 16, 18, and 19. Req. Reh’g 2-3. In particular,
Appellants dispute the Board’s holding that “Appellants have not presented
separate patentability arguments or have reiterated substantially the same
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Application 12/135,150

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argument as those previously discussed for the patentability of claim 1.” Id.
2. We find no merit in this argument. Although Appellants presented
arguments for the cited claims under separate headings, those arguments are
unavailing because they merely allege the Examiner’s findings do not teach
or suggest the corresponding limitations in the cited claims. However, none
of these arguments compares and contrasts the Examiner’s specific findings
with the corresponding limitations to showcase how these findings fail to
teach the corresponding limitations for which they are relied upon.
Appellants are reminded that merely reciting the claim limitations and
findings relied upon by the Examiner in the rejection is not a persuasive
argument. Such a response to the Examiner’s findings is insufficient to
convince us of Examiner error, as mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne,
No. 2009-004693, slip op. at 7–8 (BPAI Aug. 10, 2009) (informative). See
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”)
Second, Appellants submit the Board misapprehended or overlooked
Appellants’ arguments concerning the distinctions between Krishnamurthy
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Application 12/135,150

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and Ge’s disclosure of information hierarchy not teaching the hierarchical
data structure recited in claim 1. Id. at 3-4. According to Appellants,
hierarchical data structure refers to a navigatable search tree wherein link
nodes situated from a root node to and end node can be traversed. Id. In
contrast, the information hierarchy disclosed in the Krishnamurthy-Ge
combination cannot be traversed in a similar fashion. Id. As noted in our
initial decision, Appellants have failed to show the disclosed information
hierarchy in the proffered combination does not teach the hierarchical data
structure. Dec. 4. Furthermore, the Examiner responded to this argument in
detail in the Answer. Ans. 20-21. However, Appellants’ arguments at page
6 of the Reply Brief are not persuasive because they fail to rebut the specific
findings and explanation provided by the Examiner in the Answer.
Accordingly, we maintain our initial position that Appellants’ response was
insufficient to show error in the Examiner’s findings.
DECISION
Therefore, we have granted Appellants’ Request to the extent that we
have reconsidered the original Decision but have DENIED it with respect to
making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REHEARING DENIED

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