Michelle Fisher

Patent Trials and Appeals Board

Dec 31, 2020

2020001436 (P.T.A.B. Dec. 31, 2020)

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.
13/218,879 08/26/2011 Michelle Fisher 8771
12120 7590 12/31/2020
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
EXAMINER
HOLCOMB, MARK
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
mfisher@blazemobile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE FISHER
____________

Appeal 2020-001436
Application 13/218,879
Technology Center 3600
____________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant1 requested rehearing of the Decision entered September 4,
2020 (“Decision” or “Dec.”), which affirmed the Examiner’s rejection of
claims 1–10, 12, and 16–24 under 35 U.S.C. § 103. We have considered
Appellant’s arguments, and such arguments have not persuaded us that we
misapprehended or overlooked any arguments, facts, or points of law in our
Decision. Therefore, we deny Appellant’s Request for Rehearing (“Req.”).

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Michelle Fisher as the real party in interest. Appeal Br.
1.
Appeal 2020-001436
Application 13/218,879

2

DISCUSSION2
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1).
First, Appellant contends:
in response to the Board's assertion, “In any event, Appellant's
attempt to use an affidavit under 37 C.F.R. § 1.131 to antedate
Huomo fails. Because Huomo constitutes prior art under pre-
AIA 35 U.S.C. § 102(b), a rejection based on Huomo
constitutes a rejection based on a statutory bar. And Appellant’s
affidavit under 37 C.F .R. § 1.131 is ineffective against a
rejection based on a statutory bar. See 37 C.F.R. § 1.131(a)(2).”
(See page 13 of the Board's Decision dated September 4, 2020),
Applicant respectively disagrees.

As stated in the Appeal Brief, the Examiner rejected Huomo
under 103 not 102 . . . .
Req. 1–2.
Appellant’s argument is unpersuasive, because although the Examiner
rejects the claims under 35 U.S.C. § 103, the issue of whether the cited
references qualify as prior art is assessed under 35 U.S.C. § 102—not 35
U.S.C. § 103. Therefore, our decision correctly cites 35 U.S.C. § 102 for
determining that Huomo qualifies as prior art.
Second, Appellant argues:

2 “Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing except as permitted.” 37 C.F.R.
§ 41.52(a)(1). Therefore, to the extent Appellant advances new arguments
without showing good cause, Appellant’s new arguments are untimely.
Appeal 2020-001436
Application 13/218,879

3
US Patent Application Publication No. 2007/0156436
(Application No. 11/467,441), US Patent Publication No.
2008/0052192 (Application No. 11/933,351), and US Patent
Application Publication No. US20090124234 (Application No.
11,939, 821) serve as conception and constructive reduction to
practice since they were filed before the Huomo and Bernabeu
prior art cited by the Examiner and consequently the prior art is
not valid.
Req. 2. Appellant relies on Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir.
1998) and argues “[t]he filing of a patent application serves as conception
and constructive reduction to practice of the subject matter described in the
application.” Id. at 3 (emphasis omitted).
However, Hyatt explicitly states “[w]hen a party . . . seeks the benefit
of an earlier-filed United States patent application, the earlier application
must meet the requirements of 35 U.S.C. § 120.” Hyatt, 146 F.3d at 1352.
As discussed extensively in our Decision (Dec. 9–13), the three applications
(Application Nos. 11/467,441; 11/933,351; 11/939, 821) are merely
incorporated by reference in the Specification, which is insufficient for
claiming priority under 35 U.S.C. § 120. In fact, Appellant acknowledges
“Applicant is not seeking to claim priority under 35 U.S.C. § 120.” Req. 1.
Because the presentation Specification does not claim priority to the three
applications, Appellant cannot use the priority dates of the three applications
to determine the priority date of the present application. See Dec. 9–13.
Therefore, Appellant cannot use the three applications to disqualify Huomo
and Bernabeu as prior art. See Dec. 9–13. As a result, Appellant’s
arguments attempting to use the three applications to disqualify Huomo and
Bernabeu (Req. 2–4) are unpersuasive. See Dec. 9–13.

Appeal 2020-001436
Application 13/218,879

4
CONCLUSION
For the reasons stated above, Appellant has not persuaded us that we
misapprehended or overlooked any issue of fact or law in our Decision.
We have granted Appellant’s Request for Rehearing to the extent that
we have reconsidered our Decision. Appellant has not shown that we
misapprehended or overlooked any issue of law or fact in reaching that
decision. Accordingly, we deny Appellant’s Request for Rehearing.

DENIED