Hoffberg, Steven M.

Patent Trials and Appeals Board

Jan 7, 2021

2019001309 (P.T.A.B. Jan. 7, 2021)

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.
15/095,565 04/11/2016 Steven M. Hoffberg SMH 205.2/P-5793-88 8021
90150 7590 01/07/2021
Hoffberg & Associates
29 Buckout Road
West Harrison, NY 10604
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
roberta@hoffberglaw.com
steve@hoffberglaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte STEVEN M. HOFFBERG
____________

Appeal 2019-001309
Application 15/095,565
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
AMANDA F. WIEKER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant has filed a Request for Rehearing (hereinafter “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on
July 31, 2020 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of claims 6–13, 21–
30, 32 and 33 under 35 U.S.C. § 101, and reversed the Examiner’s rejections
of claims 6–13, 21–30, 32 and 33 under 35 U.S.C. §§ 112(a), 103(a) and
non-statutory double patenting. The Appellant seeks reconsideration of our
affirmance under 35 U.S.C. § 101.
For the reasons identified below, we deny the Request for Rehearing.

Appeal 2019-001309
Application 15/095,565
2

REQUEST FOR REHEARING ARGUMENTS
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief, filed July 12,
2018 (“Appeal Br.”), or in the Reply Brief, filed November 27, 2018
(“Reply Br.”). Neither is it an opportunity to merely express disagreement
with a decision without setting forth points believed to have been
misapprehended or overlooked. Arguments not raised in the briefs before
the Board and evidence not previously relied upon in the briefs also are not
permitted except in the limited circumstances set forth in §§ 41.52(a)(2)
through (a)(4). Id.
To the extent the Appellant presents supplemental or new arguments
in the Request, those arguments are untimely and, as such, will not be
considered except where the arguments are based on a recent relevant
decision of either this Board or a federal court, or on an allegation that the
Board’s decision contains an undesignated new ground of rejection. See id.
Appellant argues that the decision in Arthrex v. Smith Nephew, 941
F.3d 1320 (Fed. Cir. 2019) renders this proceeding an unconstitutional
deprivation of due process. Specifically, Appellant argues that after Arthrex
it is not clear that Administrative Patent Judges’ opinions are reasonably
independent from the politically-appointed Director of the USPTO and
without undue political influence. Appellant argues that post-grant
proceedings conducted by the Patent Trial and Appeals Board suggests
statistical anti-patent bias.
Appellant does not include evidence to support this argument such as
the statistics themselves or an explanation of how these statistics suggest
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Application 15/095,565
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bias. More importantly, Appellant does not explain how this argument
applies to the instant application. In fact, Appellant specifically states that
they are not alleging that this panel of the Board is politically influenced or
that the Director has taken any particular action for or against the Appellant.
As such, we are not persuaded by this argument that we misapprehended or
overlooked legal or factual points in rendering the Decision.
Appellant also argues that we did not consider (1) whether the claims
in the instant application preempt solutions to the problem that the invention
is believed to address; (2) that the claims have no human involvement and
(3) whether the Examiner’s rejection correctly found that the elements in
addition to any abstract idea are routine, conventional and well-known.
(Req. Reh’g 8). This is not true. We did not overlook these issues. We
discussed preemption on page 12 of the Decision and stated that with claims
deemed only to address patent ineligible subject matter, as do the instant
claims, preemption concerns are fully addressed and moot. We discussed
whether the claims are directed to human activity on page 14. And we
discussed whether the additional elements are routine, conventional and
well-known on page 13.
Appellant argues that because the claims encompass cryptography
they are specifically excluded from judicial exception categories under the
Guidance, because a claim to a specific data encryption method is excluded
under the Guidance. (Req. Reh’g 9). However, claim 6 is not directed to a
specific data encryption method. In fact, an encryption method is not
included at all in claim 6. Therefore, this argument is not persuasive.
We do not agree with Appellant that claim 6 recites a special purpose
computer as is defined by the Guidance. Appellant’s own Specification
discloses that the apparatus recited in the claim is general purpose hardware
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Application 15/095,565
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and not a particular machine. (Spec. 43, l. 9; 106, ll. 20–24). In any case,
for a machine to impose a meaningful limit on the claimed invention, it must
play a significant part in permitting a claimed method to be performed,
rather than merely providing the generic environment in which to implement
the recited abstract idea. Cf. Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must “play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly”); see also
MPEP § 2106.05(b)(II) (citing Versata). Appellant has not shown that any
such particular machine is recited in the claims.
Appellant argues that we did not respond to the arguments made
directed to the dependent claims. In the Appeal Brief, in making arguments
for the dependent claims, Appellant repeats the arguments made for claim 6
and restates the claim limitations and then nakedly asserts that the claims are
patent eligible. Appellant made no attempt to point out where the
Examiner’s findings and conclusions relative to the dependent claims in
regard to eligibility are deficient. Such arguments are insufficient to apprise
us of error in the rejection. In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and naked assertion that the corresponding elements were
not found in the prior art.”). Appellant made no such substantive arguments.
Nevertheless, in view of Appellant’s argument here, we amend our
opinion at page 14 so that the sentence “We will also sustain the rejection as
it is directed to claims 7–13, 21–30 and 32 because Appellant has not argue
the separate eligibility of these claims” reads “We will also sustain the
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Application 15/095,565
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rejection as it is directed to claims 7–13, 21–30 and 32 because Appellant
makes the same arguments regarding the eligibility of these claims as was
made in regard to the eligibility of claim 6.”
CONCLUSION OF LAW
For the reasons above, we are not convinced that Appellant has
shown, with particularity, points believed to have been misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1)(2011).
The Request for Rehearing is denied. However, we have amended
our decision on page 14 of the decision. We decline to make any further
changes to our opinion.
Appeal 2019-001309
Application 15/095,565
6

Outcome of Decision on Rehearing:
Claims 35 U.S.C § Basis Denied Granted
6–13, 21–30,
32, 33
101 Eligibility 6–13, 21–30,
32, 33

6–13, 21–30,
32, 33
112(a) Written
Description
6–13, 21–30,
32, 33
6–13, 21–30,
32, 33
N/A Non-
Statutory
Double
Patenting
6–13, 21–30,
32, 33
6–13, 21–30,
32, 33
103(a) Wu, Keiser,
Schirripa
6–13, 21–30,
32, 33
Overall
Outcome
6–13, 21–30,
32, 33

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Basis Affirmed Reversed
6–13, 21–30,
32, 33
101 Eligibility 6–13, 21–30,
32, 33

6–13, 21–30,
32, 33
112(a) Written
Description
6–13, 21–30,
32, 33
6–13, 21–30,
32, 33
N/A Non-
Statutory
Double
Patenting
6–13, 21–30,
32, 33
6–13, 21–30,
32, 33
103(a) Wu, Keiser,
Schirripa
6–13, 21–30,
32, 33
Overall
Outcome
6–13, 21–30,
32, 33

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).

REHEARING DENIED