Ex Parte Schofield

Patent Trial and Appeal Board

Sep 22, 2016

12700861 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121700,861 02/05/2010 Andrew John Schofield
73109 7590 09/26/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 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.
GB920090005US 1
8152-0102
CONFIRMATION NO.
8748
EXAMINER
MAMILLAP ALLI, PAV AN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW JOHN SCHOFIELD
Appeal2013-004336
Application 12/700,861
Technology Center 2100
Before DEBRA K. STEPHENS, JOHN P. PINKERTON, and
CHRISTA P. ZADO, Administrative Patent Judges.
ZADO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2013-004336
Application 12/700,861
Appellant requests rehearing of the Patent Trial and Appeal Board's
("Board") Decision mailed June 30, 2015 ("Decision"), in which we
affirmed the rejection of claims 1-11 under 35 U.S.C. § 103 as obvious over
Lenz (U.S. Patent No. 5,566,319) and Joshi (U.S. Patent No. 5,414,839).
In its Request for Rehearing ("Request"), Appellant asserts that the
Board "misapprehended and/or overlooked" arguments made in the appeal
and that the Board's Decision with regard to the appeal contains
undesignated new grounds of rejection. Req. 1. We disagree.
Appellant contends we overlooked the following arguments. With
respect to claim 6's recitation "determining whether a first hierarchical file
lock is held by a first parent process of the first plurality of processes,"
Appellant argued in the appeal that Joshi does not teach a file lock held by a
"first parent process" of a "plurality of processes" because Joshi does not
teach "processes." App. Br. 33. Appellant argued, therefore, that the
Examiner's findings of fact were "unsupported by substantial evidence and
have mischaracterized the scope and content of the applied prior art." Id.
We did not overlook this argument. Req. 8-9. In our Decision, we pointed
out that the Examiner identified Lenz, not Joshi, as teaching "a first plurality
of processes." Decision 5 ("the Examiner relies on Lenz for teaching a
process and a plurality of processes"); see also Final Act. 25 ("Applicant
argues that neither Lenz nor Joshi teach a 'first plurality of
processes' ... Examiner respectfully disagrees ... Lenz US 5,556,319
teaches the above applicant argued limitation" (emphasis added)); see also
Answer 27 (repeating Examiner's finding that Lenz teaches the disputed
limitation). Accordingly, Appellant's argument that the Examiner
mischaracterized the scope and content of Joshi was not persuasive of
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Appeal2013-004336
Application 12/700,861
Examiner error because the Examiner relied on Lenz, not Joshi, for the
teaching at issue. See Decision 5.
Similarly, Appellant asserts that we overlooked the statement in the
Reply Brief that even if Lenz teaches a first plurality of processes, the
limitation at issue recites "determining whether a first hierarchical lock file
is held by a first parent process of the first plurality of processes." Req. 8
(citing Reply Br. 7). We did not overlook this statement. The Examiner did
not rely on Lenz alone for teaching the limitation at issue, but rather relied
on the combination of Joshi and Lenz. Final Act. 13, 26. The Examiner
found, for example, that Joshi teaches "granular locking in a hierarchical
structure." Id. at 26. Moreover, we were not persuaded by Appellant's
argument that the "parent" level of the lock granularity tree in Joshi, as
relied on by the Examiner, is not a parent process as recited in claim 6.
Decision 5. In particular, Appellant failed to persuade us that the Examiner
erred in finding that the top level or root node in Joshi is a parent process (as
it locks the entire table). Id. Accordingly, Appellant's assertion failed to
persuade us that the Examiner mischaracterized the scope of Lenz. 1
1 Appellant improperly raises a new argument in the Request not made in the
appeal. Specifically, Appellant incorrectly states that the Examiner found
that Lenz teaches all of the limitations at issue. Req. 8 (citing Ans. 12).
This new argument is not entitled to consideration in rehearing (see 37
C.F .R. § 41.52), and it is also inaccurate. In the passage of the Answer to
which Appellant refers, the Examiner relied on Lenz, but specifically found
that as to "'hierarchical file lock', examiner discusses this in a secondary art
below." Ans. 12. The secondary art to which the Examiner was referring
was Joshi. See Ans. 12-14. Accordingly, the Examiner did not rely on Lenz
alone, but relied on the combination of Joshi and Lenz for the limitation at
issue.
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Appeal2013-004336
Application 12/700,861
.l .... , .. , , .. , •, , • , TT -,-, / .. "'II C -, =l • Appellant a1so assens mat our cnauon to Keller ana JVi_ercK m
support of our Decision is tantamount to "newly-presented legal arguments,"
and, therefore, constitutes undesignated new grounds of rejection. Req. 3
(emphasis omitted). Accordingly, Appellant requests that we designate the
reasoning in our Decision as new grounds of rejection under 37 C.F.R.
§ 41.50(b). Id. at 2-3. Appellant contends, as the basis of its argument, that
in the appeal its arguments were not directed to the legal question of
obviousness, but instead directed to the Examiner's underlying findings of
fact. Id. at 8-9 ("To be clear, all of Appellant's arguments were directed to
the Graham factual inquiries-not arguing about the obviousness of the
combination." (emphasis omitted)).
As discussed above, in the appeal Appellant failed to persuade us that
the Examiner mischaracterized the scope of Lenz and Joshi, namely because
Appellant argued that a particular reference alone did not teach or suggest
limitations for which the Examiner relied on the combined references. See
Decision 5. Our citation to Keller and Merck in our Decision does not
constitute new grounds of rejection. With respect to new grounds of
rejection, 37 C.F.R.§ 41.50(b) provides that "[s]hould the Board have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in its opinion a statement to that effect with its
reasons for so holding." In our Decision, our findings did not differ from
those of the Examiner, and our reasoning was with respect to the grounds
stated by the Examiner in the rejection from which the appeal was taken. In
affirming the Examiner's rejection, we did not introduce new grounds. Our
2 In re Keller, 642 F.2d 413 (CCPA 1981).
3 In re Merck, 800 F.2d 1091 (Fed. Cir. 1982).
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Appeal2013-004336
Application 12/700,861
pointing out that Appellant's arguments failed because they were premised
on a single reference's failure to teach a feature for which the Examiner
relied on combined references is not tantamount to a new ground.
For the foregoing reasons, we do not designate the reasoning in our
Decision as new grounds of rejection under 37 C.F.R.§ 41.50(b).
DECISION
Accordingly, we have granted Appellant's 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)(l )(iv).
REHEARING DENIED
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