Ex Parte Schirmer et al

Patent Trial and Appeal Board

Sep 29, 2016

11028576 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111028,576 0110512005 Andrew Lewis Schirmer
52796 7590 10/03/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Suite 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LOT920040097US1_8150-0260 1634
EXAMINER
GOFMAN,ALEXN
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 LEWIS SCHIRMER and
VAUGHN THEODORE ROKOSZ
Appeal2015-000711
Application 11/028,576
Technology Center 2100
Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
HUNG H. BUI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
• .... ' 1 .. r-.. .. T""ll. ' " T""ll. .. • .. ,.....,.., ....-.., ~ T""ll. Appeuams, nave ruea a Kequest ror Keneanng unaer j / L.t< .K.
§ 41.52 for reconsideration of our Decision on Appeal, mailed June 24, 2016
("Decision"). In that Decision, we affirmed the Examiner's final rejections
of claims 21--40 under 35 U.S.C. § 103(a) based on Schirmer (US
2003/0154212 Al; published Aug. 14, 2003), Mukherjee (US 2005/0198068
Al; published Sept. 8, 2005), and Goodwin (US 2003/0135818 Al;
published July 17, 2003). We have considered the arguments presented by
Appellants in the Request for Rehearing ("Req. Reh' g"), but we are not
persuaded that any points were misapprehended or overlooked by the Board
1 According to Appellants, the real party in interest is IBM Corporation.
App. Br. 1.
Appeal2015-000711
Application 11/028,576
in issuing the Decision. We have provided herein additional explanations,
but decline to change our decision in view of Appellants' arguments.
ANALYSIS
The applicable standard for a Request for Rehearing is set forth in
37 C.F.R. § 41.52(a)(l), 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."
In this case, Appellants request a rehearing not on the basis of any
points believed to have been misapprehended or overlooked by our
Decision, but on the basis of Appellants' incorrect characterization of our
Decision. In particular, Appellants point out that, in support of the
obviousness rejection, the Examiner relied solely upon Mukherjee for
teaching the claimed "providing, responsive to the affinity counter
exceeding a predefined threshold, an indicia to the entry" as recited in
independent claims 21 and 31. Req. Reh' g 4. Appellants assert the Board
did not address the Examiner's finding regarding Mukherjee, but rather
found "these teachings are disclosed in Schirmer." Id. at 5. According to
Appellants,
"the Board's analysis involves factual findings that were not
previously advanced by the Examiner, and thus, Appellants did
not have prior notice of all matters of fact prior to the appeal
before the Board . . . the Board is required to designate the
present Decision on Appeal a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b)."
Id. at 5.
However, Appellants' assertion and characterization of our Decision
are incorrect. First, and contrary to Appellants' assertion, we addressed
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Appeal2015-000711
Application 11/028,576
Appellants' argument regarding Mukherjee on page 5 of our Decision and
found Appellants' argument unpersuasive. In particular, we adopted the
Examiner's findings and explanations provided on page 5 of the Examiner's
Answer. Decision (citing Ans. 2-5). For example, the Examiner found:
Mukherjee [0043] describes identifying affinities between
keywords. Once the keyword surpasses "some prescribed
minimum threshold level," the keyword is included in the affinity
database. Furthermore, Mukherjee [0055] describes the concept
of identifying an affinity between search terms and search
results, "For instance, a keyword threshold condition may be
imposed that requires that a keyword be present in at least some
prescribed minimum threshold number of search engine requests
in order to qualify for assignment of an item code."
Ans. 5.
We agreed with the Examiner and adopted the Examiner's findings
and explanations regarding Mukherjee.2 Decision 5. As such, our analysis
2 See In re Cree, Inc., 818 F.3d 694, 702 n.2 (Fed. Cir. 2016) (It is common
for the Board to adopt Examiners' findings). See In re Brana, 51 F .3 d 15 60,
1564 n.13 (Fed. Cir. 1995):
The Board's decision did not expressly make any
independent factual determinations or legal
conclusions. Rather, the Board stated that it
"agree[d] with the examiner's well reasoned, well
stated and fully supported by citation of relevant
precedent position in every particular, and any
further comment which we might add would be
redundant." Therefore, reference in this opinion to
Board findings are actually arguments made by the
examiner which have been expressly adopted by the
Board.
(Internal citation omitted).
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Appeal2015-000711
Application 11/028,576
did not rely upon "factual findings that were not previously advanced by the
Examiner" as incorrectly characterized by Appellants. Req. Reh'g 5.
Nevertheless, for purposes of completeness, we made the observation
the term "objects," is also taught by Schirmer. Decision 7-8.
CONCLUSION
We have considered the arguments raised by Appellants in the
Request, but find none of these arguments persuasive that our original
Decision misapprehended or overlooked any points raised by Appellants
resulting in error. It is our view, Appellants have not identified any points
the Board misapprehended or overlooked. We decline to grant the relief
requested, i.e., to designate our Decision as containing a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b). This Decision on Appellants'
"REQUEST FOR REHEARING" is deemed to incorporate our earlier
Decision by reference. See 37 C.F.R. § 41.52(a)(l).
DECISION
We have granted Appellants' request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein. The Examiner's decision rejecting claims 21--40 under
35 U.S.C. § 103(a) remains AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
DENIED
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