Ex Parte Seaman et al

Patent Trial and Appeal Board

Jul 26, 2017

13117135 (P.T.A.B. Jul. 26, 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.
13/117,135 05/27/2011 David Robert Seaman 1500-0001 6965
76935 7590 07/28/2017
Cesari Intellectual Property Law
1114 Lost Creek Boulevard
Suite 430
AUSTIN, TX 78746
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROBERT SEAMAN, BLAIR JAMES WALL,
and CHIRSTOPHER CARL CAPSON
Appeal 2016-007612
Application 13/117,135
Technology Center 2100
Before JUSTIN BUSCH, NORMAN H. BEAMER, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON REHEARING
In a Decision entered April 27, 2017 (“Decision”) in relation to the
above-captioned application, we affirmed the Examiner’s rejection of claims
1—3 and 5—20 under 35 U.S.C. § 103(a) as being unpatentable over Woodhill
in view of Gwozdz. Appellants have requested rehearing of our Decision in
relation to our rejections.
We have granted Appellants’ request to the extent we have
reconsidered our original Decision in light of Appellants’ points, but we
decline to modify the Decision.
Appeal 2016-007612
Application 13/117,135
DISCUSSION
Appellants urge that our Decision erred because we “overlooked, and
thus failed to adhere to, the [relevant] legal standards” (Req. Reh’g 2—6),
“misapprehended the disclosure and teachings” of the prior art references
(id. at 6—8), and misapprehended the arguments made against the
combination of the prior art references (id. at 8—9). According to
Appellants, “the Decision . . . provides merely conclusory statements instead
of providing the required articulated reasoning with rational underpinning.”
(Id. at 9.)
37 C.F.R. § 41.52(a) states that “[t]he request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked by the Board. Arguments not raised, and Evidence not
previously relied upon, . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) [(i.e., ‘a new argument based upon
a recent relevant decision of either the Board or a Federal Court’)] through
(a)(4) [(i.e., ‘New arguments that the Board’s decision contains an
undesignated new ground of rejection’)] of this section.” (Emphases added.)
The issue pertinent to this request is whether Appellants have met their
burden of showing that we misapprehended or overlooked pertinent law, the
claims, or the disclosure of the cited prior art, and thus, erred in sustaining
the rejection of claims. See 37 C.F.R. § 41.52(a)(1). In sum, having
considered the arguments in the Request for Rehearing (“Request”), we are
not persuaded that we misapprehended or overlooked a particular matter in
affirming the Examiner’s rejection and we adhere to our decision to sustain
the rejection.
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Prima Facie Case
Appellants contend that “the Decision erroneously applies the law by
citing to In re Jung (Fed. Cir. 2011), which is a decision ruling on the
sufficiency of an anticipation rejection under 35 U.S.C. 102.” (Req. Reh’g
3.) In other words, Appellants contend that In re Jung does not apply to
other rejections, including 103 rejections. (Id.) We disagree.
In patent prosecution, a burden-shifting procedure occurs between the
Examiner and the Applicant, which is “merely a procedural device that
enables an appropriate shift of the burden of production.” In re Jung, 637
F.3d 1356, 1362 (Fed.Cir.2011) (citation omitted). The Examiner carries the
initial burden of establishing a prima facie case of unpatentability “by
adequately explaining] the shortcomings it perceives so that the applicant is
properly notified and able to respond.” Id. The statement of the prima facie
case, however, “need not be a full exposition on every conceivable
deficiency of a claim. . . . Rather, its purpose is simply to provide sufficient
notice to the applicant to facilitate his effective submission of information.”
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.Cir.2007). Thereafter, “the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.” Id. Finally, “[patentability vel non is then determined on
the entirety of the record, by a preponderance of evidence and weight of
argument.” In re Glaug, 283 F.3d 1335, 1338 (Fed.Cir.2002).
In Jung, the Federal Circuit notes that “the PTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in ‘notifying] the applicant. . . [by] stating the reasons for
[its] rejection, or objection or requirement, together with such information
and references as may be useful in judging of the propriety of continuing the
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prosecution of [the] application.’ 35 U.S.C. § 132.” 637 F.3d 1356, 1362
(Fed. Cir. 2011). Similar to Appellants in the current matter,
Jung contends that establishing a prima facie case requires more
than just notice under § 132, and that whatever else may he
required is part of the examiner’s burden in rejecting any claim.
According to Jung, until that burden is met by the examiner, the
rejection need not be challenged on the merits by the applicant.
In re Jung, 637 F.3d at 1363. (See also App. Br. 4—5 (challenging the
sufficiency of the Examiner’s 103 rejection arguing that the Examiner’s
rejection must satisfy the obviousness standard of KSR).) The Federal
Circuit disagrees:
This court disagrees and sees no reason to impose a heightened
burden on examiners beyond the notice requirement of § 132.
Jung, without any basis, would have this court impose additional
prima facie procedural requirements and give applicants the right
first to procedurally challenge and appeal the prima facie
procedural showing before having to substantively respond to the
merits of the rejection. Such a process is both manifestly
inefficient and entirely unnecessary. Indeed, Jung’s arguments
as to why the examiner failed to make out a prima facie rejection
are the same arguments that would be made on the merits.
In re Jung, 637 F.3d at 1363, emphasis added. While the rejection at issue
in Jung concerns an anticipation rejection, the holding in Jung, i.e., “the
PTO carries its procedural burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132,” applies to all rejections by the PTO
during prosecution. Id. Importantly, the Federal Circuit and other courts
have applied Jung to other types of rejections. See, e.g., In re Adler, (Fed.
Cir. 2013) (103 rejection); In re Hillis, 484 Fed. Appx. 491, 495 (Fed. Cir.
2012) (enablement rejection); see also Alberts v. Kappos, 917 F. Supp. 2d 94
(D.D.C 2013) (103 rejection); Disney Enterprises, Inc. v. Rea, 940 F. Supp.
2d 288 (E.D. VA 2013) (103 rejection). This is consistent with 35 U.S.C.
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§ 132, which applies to all rejections by the PTO, including obviousness
rejections under 35 U.S.C. § 103:
(a) Whenever on examination, any claim for a patent is rejected,
or any objection or requirement made, the Director shall notify
the applicant thereof, stating the reasons for such rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application; and if after
receiving such notice, the applicant persists in his claim for a
patent, with or without amendment, the application shall be
re-examined. . . .
Appellants argue that “the Decision does not address, nor even
acknowledge, that KSR is the governing law for supporting the legal
conclusion of obviousness. . . . [and that njowhere does the Decision
mention or discuss the requirements under KSR.” (Req. Reh’g 2—3.) This
argument is not persuasive. As discussed above and in the Decision, the
Examiner has satisfied its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132. Moreover, Appellants fail
to respond adequately (App. Br. 4—5) to the Examiner’s findings (Final Act.
7) and therefore, fail to show specific fault in the Examiner’s findings. See
In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not
the function of this court [or this Board] to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”). Furthermore, as we have noted in the Decision, “[w]e have
reviewed the Examiner’s rejection in light of Appellants’ arguments . . . [and
w]e are not persuaded that the Examiner erred in rejecting claims 1—3 and
5—20.” (Decision 3.)
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Impermissible Hindsight
Appellants contend that:
Nowhere does the Decision actually interpret the law required by
an impermissible hindsight analysis nor evaluate whether the
Final Rejection used impermissible hindsight, as Appellants]
ha[ve] argued. See Decision pages 6—7.
Instead, the Decision never turns its analysis to whether or
not the only suggestion to combine the references to produce the
claimed invention came from Appellants’] disclosure, as
Appellants] ha[ve] argued. The Appellants] clearly argued in
the Appeal Brief that the combination is based on hindsight
reasoning, but the Decision never makes a determination as such
with regard to the combination, instead digressing into a sole
discussion of Woodhill rather than an analysis of the argument
concerning impermissible hindsight.
Further, the Decision seems to apply impermissible
hindsight itself... Thus, the Decision is analyzing the references
contrary to the established law by ignoring what Gwozdz teaches
its metadata actually is, which is different than the claimed
elements.
(Req. Reh’g 4—5.)
Appellants’ arguments are not persuasive because Appellants have not
sustained their burden of showing that we misapprehended or overlooked a
particular matter. Specifically, Appellants have not shown that we have
misapprehended or overlooked anything, instead contending that the
Decision’s analysis is wrong. We are also not persuaded by Appellants’
contention that “the Decision never makes a determination as such with
regard to the combination, instead digressing into a sole discussion of
Woodhill rather than an analysis of the argument concerning impermissible
hindsight.” As noted above, “[i]t is not the function of this court [or this
Board] to examine the claims in greater detail than argued by an appellant”
and the Decision’s discussion of the prior art references (Decision 6—7) is in
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response to Appellants’ discussion of the prior art regarding impermissible
hindsight (App. Br. 8—10).
Prior Art References
Appellants next contend that we misapprehended the teachings in the
prior art references. (Req. Reh’g 6—8.) Appellants, however, have not
sustained their burden of showing that we misapprehended or overlooked a
particular matter. Instead, Appellants are using their Request to reargue
their case and to respond to the Decision. For example, with regard to
Gwozdz, Appellants contend that:
The Decision states “the Examiner relies on Gwozdz to
teach not sending the data but sending only the metadata
regarding the changes. (Final Act. 6; Ans. 12; Gwozdz 4:60-67
(‘Each replica associated with a node can maintain metadata that
represents ‘knowledge’ that facilitates efficient replication. For
example, such knowledge can include metadata that represents
changes for which the particular replica is aware . . . .’).)” The
Decision, page 5.
However, this reading of Gwozdz ignores the very next
sentence in the paragraph that teaches away from Appellant’s
claims (which was argued in the Appeal Brief at pages 6-7 and
8-9); “Accordingly, other replicas can be relieved from tracking
what any other particular replica already knows, as this
information can be effectively represented by the knowledge
maintained by each replica.” Gwozdz, col. 4, lines 64-67. . . .
(Req. Reh’g 6—7, emphases added.) As stated in the Decision, we agree with
the Examiner’s finding that Gwozdz teaches not sending the data but
sending only the metadata regarding the changes. The Decision cites to
Gwozdz column 4, lines 60 to 67. Appellants contention that the Decision
“ignores the very next sentence in the paragraph that teaches away from
Appellant’s claims” (Gwozdz column 4, lines 64 to 67) is therefore not
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persuasive because the Decision has already considered the portion of
Gwozdz cited by Appellants.
Moreover, Appellants have not persuaded us that column 4, lines 64
to 67 of Gwozdz teaches away from Appellants’ claims. See Depuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant, ... A reference does
not teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.”) (internal citations
omitted). Just because “other replicas can be relieved from tracking what
any other particular replica already knows . . .” (Gwozdz 4:64—67) does not
mean that “Gwozdz teaches[] that a node does not store a record of what any
other node has” (Req. Reh’g 6) as Appellants suggest, much less, “criticize,
discredit, or otherwise discourage.” In addition, Appellants’ assertion is
mere attorney argument and a conclusory statement, which is unsupported
by factual evidence, and thus, is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
With regard to Woodhill, Appellants are again using their Request to
respond to the Decision rather than pointing to any misapprehension in the
Decision. In Appellants’ Request, Appellants attempt to argue the meaning
of Woodhill column 15, line 20 to column 16, line 4. However, Appellants
have not provided good cause as to why they could not have addressed these
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portions of Woodhill or the Examiner’s findings earlier. 37 C.F.R.
§ 41.52(a) (“[arguments not raised[] and Evidence not previously relied
upon, ... are not permitted in the request for rehearing.”). Specifically, the
Examiner cites to column 15, line 9 to column 16, line 16 in the Final Action
in rejecting claims 1 and 3. (Final Act. 5—7.) Appellants chose not to
respond to the Examiner’s detailed findings but instead argue “the record
fails to provide Applicant with an opportunity to respond to a prima facie
case of obviousness” because the Examiner only provided column and line
numbers to the references and therefore did not “provide a ‘clear articulation
of the reason(s) why the claimed invention would have been obvious.’”
(App. Br. 4—5.) Appellants followed the same tack in its Reply Brief even
after the Examiner provided more explanation in the Answer (Ans. 3—15).
Combination of Woodhill and Gwozdz
Appellants again contend that we misapprehended Appellants’
arguments regarding the combination of Woodhill and Gwozdz. (Req.
Reh’g 8—9.) Appellants, however, have not sustained their burden of
showing that we misapprehended or overlooked a particular matter. For
example, Appellants contend that they “did not argue that a physical
combination of the structures could not be accomplished, as is asserted by
the Decision.” However, the Decision addresses the paragraph because
Appellants argument “appears to be based on incorporation of Gwozdz.”
(Decision 7, emphasis added.) Regardless, the Decision and this Order have
addressed Appellants arguments relating to the combination of the
references.
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SUMMARY
We are not persuaded that our Decision affirming the Examiner’s
35 U.S.C. § 103(a) rejection of claims 1—3 and 5—20 misapprehended or
overlooked any point of fact or law advanced by Appellants. We, therefore,
decline to modify our original Decision entered April 27, 2017.
DENIED
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