Hanwha Techwin Co., Ltd.

Patent Trials and Appeals Board

Feb 10, 2022

2020006089 (P.T.A.B. Feb. 10, 2022)

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. 16/139,499 09/24/2018 Jung Bin HONG HT70007 9305 71433 7590 02/10/2022 McLean IP Global 3010 Lyndon B Johnson Freeway Suite 1200 Dallas, TX 75234 EXAMINER SEGURA, CYNTHIA ART UNIT PAPER NUMBER 2698 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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): contact@mcleanip.com jason.pahng@gmail.com jason.pahng@mcleanip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUNG BIN HONG, JEONG WOONG PARK, BYEOUNG WOOK LEE, and JU YOUNG IM ____________ Appeal 2020-006089 Application 16/139,4991 Technology Center 2600 _______________ Before HUNG H. BUI, CHRISTA P. ZADO, and SCOTT RAEVSKY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(b)(2) (2011) for reconsideration of our Decision on Appeal, mailed November 10, 2021 (“Decision”). In that Decision, we affirmed (1) the Examiner’s anticipation rejection of claims 2-4, 7, and 9-11 based on Hatanaka; (2) the Examiner’s anticipation rejection of claims 14-16 and 22-24 based on Kubo; and (3) the Examiner’s obviousness rejection of claims 5, 6, 8, and 18-21 based on cited prior art, including Kubo, Hatanaka, Nakamura, and Svendsen. We have considered Appellant’s new arguments presented in the 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). According to Appellant, Hanwha Techwin Co., Ltd., is identified as the real party in interest. Appeal Br. 2. Appeal 2020-006089 Application 16/139,499 2 Request for Rehearing (“Req. Reh’g”), but we are not persuaded by Appellant’s arguments. We have provided herein additional explanations, but decline to change our decision in view of Appellant’s arguments. ANALYSIS The applicable standard for a Request for Rehearing is set forth in 37 C.F.R. § 41.52(a)(1) (2011), 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, Appellant requests a rehearing not on the basis of any points believed to have been misapprehended or overlooked by our Decision, but on the basis of Appellant’s alleged “new grounds of rejection” included in the Decision relative to the Examiner’s anticipation rejection of claims 2-4, 7, and 9-11 based on Hatanaka, “without any elaboration or any explanation,” which “absolutely changes the thrust of the teaching of the final Office action.” Request 2-4. In particular, Appellant argues the Examiner cited Hatanaka’s “CPU of [management] server 11; see figs. 2A, 2B” in the Final Office Action (Final Act. 11), but the Board referred to Hatanaka’s “information processing unit 24 including control unit 27, shown in Figures 4A-4B” as teaching Appellant’s claimed “processor configured to match beacon information with an image of a monitoring region captured by the camera” recited in claim 4. Id. (citing Final Act. 11 and Decision 5). Appellant argues “there is no elaboration of the teaching of processing unit 24” and “the use of ‘processing unit 24’ changes the thrust of the rejection.” Request 5-6 (citing In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976)). According to Appellant, “Because the new element “processing unit 24” has never been mentioned in FOA (11/22/2019), Appellant has never had an Appeal 2020-006089 Application 16/139,499 3 opportunity to consider the new teaching involving ‘processing unit 24’ and appropriately either provide an argument or make a new amendment.” Id. at 6. Because the alleged lack of “opportunity to consider the new teaching involving ‘processing unit 24,’” Appellant requests that the Board designate the Decision as “new grounds of rejection.” Id. at 12. Appellant’s arguments misapprehend the standard for a request for rehearing set forth in 37 C.F.R. § 41.52(a)(1) and, as such, are not an appropriate basis for a rehearing request or request to designate the Decision as a “new ground of rejection” because the Board already addressed these arguments on pages 5-8 of the Decision. Under 37 C.F.R. § 41.52(a)(4), “new arguments that the Board’s decision contains an undesignated new ground of rejection are permitted.” However, “the ultimate criterion of whether a rejection is considered ‘new’ . . . is whether appellants have had fair opportunity to react to the thrust of the rejection.” Kronig, 539 F.2d at 1303. The purpose of designating the Board’s decision as containing a “new ground of rejection” is to ensure that all appellants are afforded due process. In cases that come before the Board, “due process” means that the Board must ensure that appellants are given a fair opportunity to respond to the thrust of a rejection. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing Kronig, 539 F.2d at 1302). For example, if the Board affirms an adverse decision of an examiner based on new evidence (such as a new prior art reference) or a new rationale, the Board must consider whether this decision changes the examiner’s decision in such a way that the appellant has not been given a fair opportunity to respond to the thrust of the rejection. Appeal 2020-006089 Application 16/139,499 4 In such cases, the Board should consider designating the Board’s decision as containing a new ground of rejection. However, it is generally not a new ground of rejection if the Board’s decision responds to appellant’s arguments using different language, or restates the reasoning of the rejection in a different way, so long as the evidence relied upon is the same and the “basic thrust of the rejection” is the same. Kronig, 539 F.2d at 1303; see also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner”). In this case, the basic thrust of the rejection at the Examiner and Board level is the same. Compare Final Act. 11-15, with Decision 5-8. In particular, our affirmance of the Examiner’s anticipation rejection of claims 2-4, 7, and 9-11 based on Hatanaka is not based on the claimed “processor.” A decision on appeal need only consider arguments and authorities raised in the appeal brief. 37 C.F.R. § 41.37(c)(1)(iv). In the Appeal Brief, Appellant did not raise any arguments disputing the Examiner’s finding regarding the claimed “processor.” Instead, Appellant focused solely on Hatanaka’s user terminal 10, shown in Figure 1, and argued: there is no showing that Hatanaka recites that the user terminal 10 of Hatanaka receives the target tag ID (beacon information) of Hatanaka, as claimed in claim 4. The user terminal 10 merely request[s] an image with an image identification information (see [0089] of Hatanaka). Sometimes, the user terminal 10 requests an image with a tag ID (see [0085] of Hatanaka]. There is no reason for the user terminal 10 to receive the target tag ID. There is no disclosure that the user terminal 10 of Hatanaka receives the target tag ID. Appeal 2020-006089 Application 16/139,499 5 Appeal Br. 6 (emphasis added). Our reasoning with regard to the issue raised by Appellant did not rely on whether the claimed “processor” is mapped to Hatanaka’s server 11 or processing unit 24. As we explained in the Decision, the term “another image obtaining apparatus” was not defined by Appellant’s Specification and, as such, could be broadly, but reasonably, interpreted to encompass any component of Hatanaka’s Figure 1 that receives “the beacon information [i.e., tag ID],” including, for example, (1) user terminal 10, (2) management server 11, or (3) user terminal/server 10, 11. Decision at 7. Accordingly, whether the Examiner relied on management server 11 or processing unit 24 for the claimed “processor” is immaterial to our finding that the Examiner did not err as to the issue Appellant raised in the appeal-i.e., whether Hatanaka transmits an image ID tag to “another image obtaining apparatus.” We note that our discussion of Hatanaka’s “information processing unit 24 including control unit 27, shown in Figures 4A-4B” was included in response to the Examiner’s position relative to Hatanaka. See, e.g., Ans. 6-7 (Examiner’s discussion of control unit 27); Hatanaka Figures 4A, 4B (depicting processing unit 24 as including imaging control unit 27). As such, that discussion does not change the basic thrust of the anticipation rejection based on Hatanaka. Moreover, Appellant had ample opportunity to respond to the Examiner’s findings regarding processing unit 24 and imaging control unit 27, but did not. See Appeal Br. 6-7; Reply Br. 2-4. For the foregoing reasons, Appellant has failed to identify any issue we misapprehended or overlooked in determining that the Examiner did not err as to the issue before us in the appeal. Appeal 2020-006089 Application 16/139,499 6 CONCLUSION We have considered the arguments raised by Appellant in the Request, but find none of these arguments persuasive that our original Decision misapprehended or overlooked any matter by not designating our Decision as entering a new ground of rejection. We decline to grant the relief requested. This Decision on Appellant’s “REQUEST FOR REHEARING” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1) (2011). DECISION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Ba sis Denied Granted 2-4, 7, 9-11 102 Hatanaka 2-4, 7, 9-11 14-16, 22-24 102 Kubo 14-16, 22-24 8, 18-21 103 Hatanaka, Kubo 8, 18-21 5 103 Hatanaka, Nakamura 5 6 103 Hatanaka, Svendsen 6 Overall Outcom e 2-11, 14-16, 18-24 Appeal 2020-006089 Application 16/139,499 7 Final Outcome of Appeal after Rehearing Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-4, 7, 9-11 102 Hatanaka 2-4, 7, 9-11 14-16, 22-24 102 Kubo 14-16, 22-24 8, 18-21 103 Hatanaka, Kubo 8, 18-21 5 103 Hatanaka, Nakamura 5 6 103 Hatanaka, Svendsen 6 Overall Outcome 2-11, 14- 16, 18-24 TIME PERIOD FOR RESPONSE 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)(1)(iv) (2013). REHEARING DENIED