Ex Parte Sen et al

Patent Trial and Appeal Board

Mar 6, 2014

11336231 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHILAD W. SEN, WERNER GEYER, MICHAEL MULLER,
MARTIN T. MOORE, ELIZABETH A. BROWNHOLTZ and
MICHAEL C. WU
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Appeal 2011-006544
Application 11/336,231
Technology Center 2100
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Before ST. JOHN COURTENAY, THU A. DANG and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-006544
Application 11/336,231

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Appellants have filed a Requested for Rehearing under 37 C.F.R.
§ 41.52 on February 24, 2014 (“Request”) from our Decision on Appeal
mailed December 23, 2013 (“Decision”), wherein we affirmed the
obviousness rejection of claims 1-14 and 22-28. See Decision 7.
Appellants seek rehearing only of the rejections affirmed in respect to
claims 3, 9 and 23. Request 4.
Appellants contend:
In the Decision on Appeal, though, the Board disagreed
providing but a single sentence explanation of “We do not find
Appellants’ arguments to be persuasive because we did not find
Goodman to be deficient.” No further analysis has been
provided so as to enable Appellants' to understand the findings
of the Board. It appears that the Board may have established a
NEW ground of rejection under 37 C.F.R. 41.50(b) by
eliminating the “JC” or “Gmail RSS Feed” from the rejection
under 35 U.S.C. § 103(a) and instead relying upon portions of
Goodman. Yet, the Board provides no specific pinpoint
reference to Goodman providing for a subscription that has
been established by the alert server on behalf of an application
view of an application that is a syndicated feed such as an RSS
feed or an Atom feed.
Id. at 3-4.
However, in the Appeal Brief, Appellants’ entire arguments pertaining
to claims 3, 9 and 23 were as follows:

Claims 3, 9 and 23 respectively depend from independent
claims 1, 8 and 22, and Appellants incorporate herein the
arguments previously advanced in traversing the imposed
rejection of claims 1, 8 and 22 under 35 U.S.C. § 103 for
obviousness based upon Goodman. The tertiary reference to
Gmail RSS Feed does not cure the argued deficiencies of the
Goodman. Accordingly, even if one having ordinary skill in the
art were motivated to modify Goodman in view of Gmail RSS
Appeal 2011-006544
Application 11/336,231

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Feed, the proposed combination of references would not yield
the claimed invention. Applicants, therefore, respectfully
submit that the imposed rejection of claims 3, 9 and 23 under
35 U.S.C. § 103 for obviousness based upon Goodman in view
of Gmail RSS Feed are not viable.

Appeal Brief 14-15.
Thus, in the Appeal Brief, Appellants did not argue with any
specificity why claims 3, 9 and 23 are distinguishable over the combination
of Goodman and JC (Gmail RSS Feed) other than “The tertiary reference to
Gmail RSS Feed does not cure the argued deficiencies of the [sic]
Goodman” and “the proposed combination of references would not yield the
claimed invention.” Id., emphasis added.
Subsequently, as we stated in our Decision, “We do not find
Appellants’ arguments to be persuasive because we did not find Goodman to
be deficient.” Id. We did also not find Appellants’ arguments to be
persuasive because of the lack of specificity in regard to the alleged
deficiency of the combination of the cited prior art references. See id.
Thus, we do not agree that we misapplied the relevant law and
misapprehended the Appellants’ argument in affirming the Examiner’s
rejection of claims 3, 9, and 23. Accordingly, Appellants’ Request for
Rehearing has been granted to the extent that our Decision has been
reconsidered, but such request is denied with respect to making any
modifications 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). See 37
C.F.R. § 41.50(f).

Appeal 2011-006544
Application 11/336,231

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REHEARING
DENIED

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