12536777 - (R) (P.T.A.B. Dec. 19, 2019)

Robert H. Scheer

Patent Trials and Appeals BoardDec 19, 2019

12536777 - (R) (P.T.A.B. Dec. 19, 2019)

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. 12/536,777 08/06/2009 Robert H. Scheer 31083.05US6 4019 34018 7590 12/19/2019 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER BUCHANAN, CHRISTOPHER R ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 12/19/2019 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): chiipmail@gtlaw.com clairt@gtlaw.com jarosikg@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT H. SCHEER1 ____________ Appeal 2018-001114 Application 12/536,777 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on rehearing in Appeal Number 2018-001114. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appellant may also present a new argument based upon a recent 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as W.W. Grainger, Inc. (Appeal Br. 2). Appeal 2018-001114 Application 12/536,777 2 relevant decision of either the Board or a Federal Court. 37 C.F.R. § 41.52 (a)(2). ANALYSIS The Appellant requests rehearing first on the grounds that Decision mailed September 20, 2019 did not rely on the same factual underpinnings in the rejection (Request, 1). The Appellant argues secondly that the reference cited for the first time in the Decision does not have a date of publication and thus has not been shown to be a reference to show that the argued claim limitations were “well understood, routine, and conventional” to a skilled artisan at the time priority date2 (Request, 2). After consideration of Appellant’s Request for Rehearing, the request is granted. The Appeal Brief set forth that the subject matter in the claims “improves the functioning of technology” by reciting: the use of an ontology, in which frames acting as nodes in a semantic network define attributes indicative of restrictions and allowable locations within the supply chain for the item, to determine a shipping method for replenishing the item at each of the plurality of geographically distinct distribution points in the supply chain (Appeal Br. 5, emphasis in original). In response to the above assertion, the Examiner’s Answer at page 3 asserted that the above recited feature was well-known, but did not provide specific evidence of this. The Decision mailed September 20, 2019 did provide a citation (FF2) to show that frame nodes are a known tool for collecting related nodes, but that citation did lack a date to show it was 2 The Application contains continuing data to 09/867,200 filed 05/29/2001, which claims benefit of 60/263,317 filed Jan. 22, 2001. Appeal 2018-001114 Application 12/536,777 3 conventional at the time of the priority date cited which was in the year 2001. In light of the Appellant’s remarks we are persuaded that the cited claim limitation in the context of the claim was based on a new factual underpinning and has not been established to be well-understood, routine, or conventional on the record that was before us in the rejection of record or in the citation that was used in the Decision. Accordingly, the request for rehearing is granted, and the rejection of claims 7–13 under 35 U.S.C. § 101 is not sustained. DECISION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 7–13 101 Eligibility 7–13 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–13 101 Eligibility 7-13 REHEARING GRANTED