Ex Parte Simister et al

Patent Trial and Appeal Board

Dec 11, 2017

13907321 (P.T.A.B. Dec. 11, 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.
13/907,321 05/31/2013 James Bret Simister P53801CR/45631-229925 9564
73486 7590 12/18/2017
Barnes & Thornburg LLP (Intel)
11 S. Meridian Steet
Indianapolis, IN 46204
EXAMINER
SAX, STEVEN PAUL
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
Inteldocs_docketing @ cpaglobal.com
IN docket @ btlaw. com
inteldocket @ btlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BRET SIMISTER,
ADAM G. WOLFF, MAX DAVID CARLSON,
CHRISTOPHER KIMM, and DAVID T. TEMKIN
Appeal 2016-004929
Application 13/907,321
Patent 7,954,066 B1
Technology Center 2100
Before ALLEN R. MacDONALD, KEN B. BARRETT, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Intel Corporation1 (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1—44 (patent claims 1—16 and
reissue claims 17-44) in reissue application 13/907,321, filed May 31, 2013.
The reissue application seeks to reissue U.S. Patent 7,954,066 B1 (“the ’066
1 Intel Corporation is identified as the real party in interest (Br. 2) and the
assignee of the subject application (Application Data Sheet (10/7/14)).
Appeal 2016-004929
Application 13/907,321
Patent 7,954,066 B1
patent”), issued May 31, 2011, based on application 11/178,222, filed July 8,
2005. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The claimed invention pertains to graphical user interfaces. The ’066
patent, 1:27—28. According to the ’066 patent, “[i]n one implementation, the
interface provides a user with displays that transition fluidly, interact
seamlessly with other on-screen displays, and respond in real time to user
input interruptions.” Id. at 2:23—28. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for providing an interface, comprising:
sending a request for network content from a network
browser to a server via a network;
receiving an interface engine in response to said request,
said interface engine including executable code having
instructions to render a set of views in a user interface, each view
having a set of attributes associated therewith, and instructions
to modify each view through one or more attribute modifiers
associated with each view, wherein said attribute modifiers
include layouts, constraints and animators;
providing the user interface in said network browser using
said interface engine;
receiving a request to change an appearance of at least one
particular item of multiple items displayed in said user interface,
wherein the one particular item is associated with a first view
from the set of views; and
in response to said request, changing the appearance of
said one particular item in said user interface using said
executable code of said interface engine to provide a continuous
fluid transition of the appearance of said one particular item with
a result that was not predetermined prior to said request, said
continuous fluid transition is performed by calling said one or
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more attribute modifiers for said first view and modifying said
first view in response to said one or more attribute modifiers.
Br. 18 (Claims Appendix).
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1—44 (patent claims 1—16 and reissue claims 17-44) are
rejected under 35 U.S.C. § 251 as being based upon a defective reissue
declaration;
2. Claims 1—44 (patent claims 1—16 and reissue claims 17-44) are
rejected under 35 U.S.C. § 251 as being broadened in a reissue application
made and sworn to by the assignee; and
3. Reissue claims 35—44 are rejected under 35 U.S.C. § 251 as
being an improper recapture of broadened claimed subject matter
surrendered in the application for the patent upon which the present reissue
is based.
ANALYSIS
A. The Defective Declaration Rejection
The purported error to be corrected by reissue has been identified as:
“The patentee did not pursue computer readable medium claims
corresponding [to] the [patented] method Claims 1, 8, 13 or 15.” Substitute
Statement in Lieu of an Oath or Declaration for Reissue Patent Application
(9/3/13) (hereinafter “Substitute Statement”) 2; see also Reissue Decl.
(5/31/13) 1 (same description of error; unsigned document).
The Examiner rejected all of the claims on appeal as based on a
defective reissue declaration because of the failure to identify an error
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Patent 7,954,066 B1
correctable by reissue. Final Act. 2. The Examiner’s position is that the
patentee did pursue computer readable medium claims, citing patented
claim 17 as an example, and “to merely state that the applicant is pursuing
‘computer readable medium claims corresponding’ to specific claims is
insufficient” to be an identification of an error correctable by reissue. Id.
Appellant maintains that failure to pursue, during the original
prosecution, “computer-readable medium claims . . . that correspond with
(e.g., include similar features as) method claims that have been patented” is
an error correctable by reissue. Br. 12—13; see also id. at 13—14 (arguing
that computer readable medium claims corresponding to patented method
claims 1, 8, 13, and 15 were never presented during prosecution, and that
gives rise to the alleged error). Appellant asserts that independent patented
claim 17 (reciting “processor readable storage devices”) includes features
different than those of the issued method claims for which new computer
readable medium claims are sought. Id. at 13.
We are not persuaded of error in the Examiner’s rejection.
Appellant’s description of the purported error in the Substitute Statement
does not identify any correctable error with adequate specificity. As the
Examiner notes, computer readable medium claims were pursued and are
present in the issued patent. Final Act. 2; Ans. 2—3; see the ’066 patent,
17:4—18:18 (issued claims 17 and 18). Thus, the Applicant clearly
contemplated such claims during prosecution. Appellant’s description of the
error does not identify any feature of the corresponding method claims that
was erroneously omitted from the prosecuted computer readable medium
claims. The assertion that patented computer readable medium claim 17
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contains features not in other claims is not persuasive as that merely points
to what was not erroneously omitted.
Appellant does not explain adequately why it was an “error,” within
the meaning of the reissue statute, to not include the now-sought computer
readable medium claims notwithstanding the fact that the applicant did
pursue computer readable medium claims during the prosecution of the
original application. See In re Dinsmore, 757 F.3d 1343, 1347 (Fed. Cir.
2014) (upholding the rejection “because the applicants have not identified an
‘error’ underlying the choices made in the original patent that they now seek
to revise”). Accordingly, we sustain the Examiner’s rejection of claims 1—
44 (patent claims 1—16 and reissue claims 17—44) under 35 U.S.C. § 251 as
being based upon a defective reissue declaration.
B. The Rejection for Being a Broadening
Reissue Application Executed by the Assignee
For the present reissue application, Appellant filed a Substitute
Statement in Lieu of An Oath or Declaration. The Substitute Statement was
executed by the assignee, who has represented that the inventors could not
be found or reached after diligent effort. See Substitute Statement (9/3/13)
1. Appellant relies on 37 C.F.R. §§ 1.64 and 1.175(c) as support for this
procedure. Br. 15.
The Examiner rejected all of the claims on appeal, maintaining that
the reissue application is a broadening one and, as such, requires a reissue
oath or declaration signed by the inventors, not the assignee. Final Act. 2—3
(citing 35 U.S.C. §251). Specifically, the Examiner rejected the claims “as
being improperly broadened in a reissue application made and sworn to by
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the assignee.” Id. at 2. The Examiner maintains that “the rule for
examination is that assignee may not file the reissue application given the
failure to meet either of the two exceptions [1) the application is not a
broadening reissue or 2) the application for the original patent was filed by
the assignee].” Ans. 3. We cannot sustain the rejection.
Rule 1.175(c) provides:
The inventor, or each individual who is a joint inventor of a
claimed invention, in a reissue application must execute an oath
or declaration for the reissue application, except as provided for
in § 1.64, and except that the inventor’s oath or declaration for a
reissue application may be signed by the assignee of the entire
interest if:
(1) The application does not seek to enlarge the scope of
the claims of the original patent; or
(2) The application for the original patent was filed under
§ 1.46 by the assignee of the entire interest.
37 C.F.R. § 1.175(c) (emphasis added). Thus, in addition to the two
exceptions identified by the Examiner, Rule 1.175 provides a third exception
to the requirement of an oath executed by the inventors—that exception
being “as provided for in [37 C.F.R.] § 1.64.” Section 1.64 is titled
“Substitute statement in lieu of an oath or declaration,” and states, in
pertinent part, that an assignee “may execute a substitute statement in lieu of
an oath or declaration under § 1.63 if the inventor . . . cannot be found or
reached after diligent effort.” 37 C.F.R. § 1.46(a). The United States Patent
and Trademark Office, when making changes to implement the inventor’s
oath or declaration provisions of the Feahy- Smith America Invents Act,
confirmed that “Section 1.175(c) provides for filing a substitute statement in
reissue applications by its reference to § 1.64.” 77 Fed. Reg. 48,776, 48,806
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(Aug. 14, 2012) (response to “[o]ne comment [that] suggested that §§ 1.172
and 1.175 be revised to provide for filing a substitute statement, rather than
an oath or declaration, in the permitted circumstances.”). And, as Appellant
points out (Br. 15 n.l), the Office’s Substitute Statement form contemplates
the use, in filing a broadening reissue application, of a Substitute Statement
executed by an assignee. See Form PTO/AIA/07 (06-12), 2 (“At least one
error upon which reissue is based is described below. If the reissue is a
broadening reissue, a claim that the application seeks to broaden must be
identified[.]”).
As mentioned, the Examiner determined that it is impermissible under
the rules for a broadening reissue application to be made and sworn to by an
assignee unless the assignee filed the original application. That is incorrect,
and therefore we do not sustain this rejection of claims 1—44 (patent claims
1—16 and reissue claims 17-44) for that reason. Other than discussed above
in the context of the first rejection, we do not reach the issue of whether the
Substitute Statement in this case otherwise satisfies the requirements of the
reissue statute, 35 U.S.C. § 251, or the pertinent rules.
C. The Recapture Rejection
The Examiner rejected reissue claims 35—44 as being an improper
recapture of surrendered subject matter. Final Act. 4—5. Appellant presents
arguments directed to the first two rejections but does not present any
arguments addressing this recapture rejection. See Br. 12—16; id. at 16 (with
emphasis added, “Appellant submits the two grounds of rejection are
erroneous.”); cf Ans. 3 (The Examiner noting this omission). As such, the
Appellants have waived any argument of error, and we summarily sustain
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the rejection of reissue claims 35—44 under 35 U.S.C. § 251 as being an
improper recapture of broadened claimed subject matter surrendered in the
application for the patent upon which the present reissue is based.
DECISION
The decision of the Examiner to reject claims 1—44 (patent claims 1—
16 and reissue claims 17—44) is 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).
AFFIRMED
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