Starr, Ephraim D. et al.

Patent Trials and Appeals Board

May 11, 2020

12895321 - (R) (P.T.A.B. May. 11, 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.
12/895,321 09/30/2010 Ephraim D. Starr RPS920100040-US-NP 7580
109808 7590 05/11/2020
LENOVO/PANGRLE
Pangrle Patent, Brand & Design Law, P.C.
3500 W Olive Ave
3rd Floor
Burbank, CA 91505
EXAMINER
SATTI, HUMAM M
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
brian@ppbdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EPHRAIM D. STARR, HOWARD J. LOCKER,
JAMES S. RUTLEDGE, and JUSTIN T. DUBS
Appeal 2019-001479
Application 12/895,321
Technology Center 2400

Before ADAM J. PYONIN, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests a rehearing of the Decision on Appeal mailed
February 4, 2020 (the “Decision”). See Request for Rehearing filed April 6,
2020 (the “Request”). We have reconsidered the Decision in light of
Appellant’s arguments; however, we are not persuaded of any error therein.

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 Lenovo
Singapore Pte. Ltd. Appeal Br. 2.
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DISCUSSION
The Examiner initially cited paragraph 85 of Ansari2 in rejecting the
claims as obvious in view of the cited references. Final Act. 5. The
Examiner later acknowledged paragraph 85 was inadvertently cited,
however, and clarified that paragraph 58 of Ansari provides the relevant
teachings. Ans. 17. On appeal, we determined that “[e]ven if the Examiner
presents a new ground of rejection in the Answer—as opposed to fixing a
typographical error—Appellant’s recourse was to petition the Director. See
37 C.F.R. § 41.40(a); MPEP § 1207.03. Such petitionable matters are not
considered by the Board on appeal. See MPEP § 1201.” Decision 5, n.3.
We affirmed the Examiner’s rejections of the claims in view of Ansari and
various combinations of other references. Decision 12.
Appellant argues the “[t]he Board’s Decision of 4 February 2020
overlooks Appellant’s arguments as to the Examiner’s express admissions
and the Board’s Decision misapprehends Authority.” Request 2. Appellant
further argues “the Board’s Decision ‘contains an undesignated new ground
of rejection.’” Id. We address Appellant’s points, below.

Independent claim 1 and dependent claim 11
Appellant alleges the Decision “overlooks the fact that evidence in
Ansari is insufficient to provide for the claimed element” and “appears to
have improperly shifted Appellant’s argument regarding Ansari from one of
fact finding to one of reasoning, which would leave a hole in the Examiner’s
fact finding.” Request 6. Appellant further contends “the Board’s Decision

2 Ansari, US Publication No. 2010/0071053 A1 (March 18, 2010).
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does not align with the grounds of rejection, which became quite convoluted
due to the Examiner’s shift in the citation of evidence in Ansari, whether due
to a typographical error or not.” Id. at 7.
Based on our review of the record, we are not persuaded of error in
the Decision. Appellant’s argument, that we improperly shifted Appellant’s
argument regarding Ansari from one of fact finding to one of reasoning, fails
to identify the alleged hole in the Examiner’s fact finding or to persuasively
explain how we shifted the argument from one of fact finding to one of
reasoning in the Decision to fill that hole. Request 6. Moreover,
Appellant’s arguments focus on the Examiner’s new citation to Ansari in the
Answer. See, e.g., Request 4 (“the Examiner’s not previously cited evidence
in para. 0058 of Ansari”). By not filing a petition, Appellant waived any
challenge to the Examiner’s citation being an undesignated new ground of
rejection. See 37 C.F.R. § 41.40(a) (2017). Further, Appellant had full
opportunity to respond to the Examiner’s Answer. See Reply Br. 4 (“Herein,
Appellant responds to the New Ground of Rejection citing Ansari at para.
0058 rather than para. 0085.”).
The Decision addressed Appellant’s arguments with respect to the
Examiner’s findings in the Answer, and we were “not persuaded the
Examiner errs in relying on Ansari.” Decision 6. Appellant has not shown
such determination was in error, or that the Decision does not comport with
the Examiner’s rejection. See Decision 6 (“The Examiner cites Ansari for
teaching an apparatus for controlling a television having ‘logical rules for a
phone function.’”); Ans. 17, 18. Ansari—as cited by the Examiner—
discloses “notices may be displayed on the TV [in] a particular room when a
phone call is received.” Ansari ¶ 58; See Decision 6, 7; Ans. 17.
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Accordingly, we are not persuaded we erred in determining “one of ordinary
skill would have used the gateway phone functionality of Ansari (i.e., to
control a television based on a received call) in the remote control apparatus
provided by the combined teachings of the other cited references . . . , in the
manner claimed.” Decision 7, 8; Ans. 17, 18; Final Act. 5.
Nor does Appellant persuade us that we misapprehended authority by
finding “Appellant has not persuasively shown the Examiner’s combination
of cited references fails to teach or suggest the disputed claim limitations.”
Decision 7 (citing In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986)). For example, Appellant argues “the Board’s Decision fails to
account for the Examiner’s express admission of record as to Ansari: ‘The
combination of Tsern[3] and Ansari does not explicitly disclose entity
associated with a phone call.’” Request 4 (emphasis omitted) (citing Final
Act. 5). The Examiner, however, “incorporates Pierre”4 for teaching
“logical rules for a phone function which is based on an ‘entity.’” Ans. 18;
see Decision 8 (quoting Pierre ¶ 25 (“[I]ncoming events, that is, phone calls,
emails, reminders, etc. are handled differently depending on who is
calling.”)); Final Act. 5. Appellant does not show we misapprehended or
overlooked any points when we found Appellant’s arguments against Ansari
unpersuasive with respect to the teachings of Pierre or the other cited
references. See Decision 7, 8.
Appellant further argues the Decision “misapprend[ed] or
overlook[ed] Appellant’s points as to . . . dependent claim 11.” Request 2.
Other than quoting the Decision, Appellant does not explain what was

3 Tsern, US Publication No. 2010/0060549 A1 (March 11, 2010).
4 Pierre, US Publication No. 2003/0070182 A1 (April 10, 2003).
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overlooked or misapprehended with respect to the rejection of claim 11. See
Request 3. Thus, we do not find we erred in sustaining the Examiner’s
rejection of claim 11. See Decision 11, 12.
We are not persuaded we misapprehended or overlooked any points in
sustaining the Examiner’s obviousness rejections of claims 1 and 11.

Dependent claims 23 and 24
In the Decision, we determined “[i]n the Reply Brief, Appellant
presents new arguments regarding Krzyzanowski,[5] such as by arguing
Krzyzanowski teaches away from the subject matter of claims 23 and 24.
See Reply Br. 18. These arguments could have been raised in the opening
brief and are therefore waived.” Decision 11.
Appellant argues we misapprehended the record, because the
Examiner’s citation to paragraph 58 of Ansari comprises “a shift in the
evidence as to a reference underlying the grounds of rejection, [which]
certainly . . . materially impacts the reasoning as to the ultimate conclusion
as to obviousness.” Request 9. Appellant contends, therefore, “Appellant’s
arguments raised in the Reply Brief to Krzyzanowski were proper.
Rehearing is therefore also requested to have Appellant’s arguments as to
Krzyzanowski properly considered.” Id.
We do not find we misapprehended or overlooked any points with
respect to Appellant’s arguments. The alleged “shift in the evidence as to a
reference” was the Examiner’s citation to Ansari; Appellant has not
identified any shift with respect to the Examiner’s findings for

5 Krzyzanowski, US Publication No. 2006/0053447 A1 (March 9, 2006).
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Krzyzanowski. Id.; see Ans. 19, 20; Final Act. 4, 6. Appellant presents no
arguments with respect to Ansari for claims 23 and 24 in the Reply Brief.
Reply Br. 17, 18. Rather, Appellant’s arguments were that “Krzyzanowski
is specific” and “teaches away from the subject matter.” Reply Br. 18.
These arguments were unrelated to any possible shift with respect to Ansari;
whether the Examiner cites paragraph 58 or paragraph 85 of Ansari has no
bearing on Krzyzanowski’s specific nature or potential teaching away from a
claim, and such arguments could have been raised in the Appeal Brief.
Appellant’s new arguments in the Reply Brief were not responsive to
an argument raised in the Answer, and Appellant has not shown good cause
for considering these arguments. See 37 C.F.R. § 41.41(b)(2). Accordingly,
we are not persuaded we misapprehended any points in determining the
Reply Brief arguments were waived. See Decision 11.
CONCLUSION

Outcome of Decision on Rehearing:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1, 12, 13,
15, 18,
23, 24
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre
1, 12, 13,
15, 18, 23,
24

2, 3, 5,
10, 21
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt
2, 3, 5, 10,
21

6, 7, 8,
16, 20
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Dresti
6, 7, 8, 16,
20

Appeal 2019-001479
Application 12/895,321

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
17 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Krzyzanowski-1, Paryani
17
11 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Xiong
11
9 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Dresti, Huang
9
Overall
Outcome
1–3, 6–9,
11–13, 15–
18, 20–24

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 12, 13,
15, 18,
23, 24
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre
1, 12, 13,
15, 18, 23,
24

2, 3, 5,
10, 21
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt
2, 3, 5, 10,
21

6, 7, 8,
16, 20
103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Dresti
6, 7, 8, 16,
20

17 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Krzyzanowski-1, Paryani
17
11 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Xiong
11
9 103(a) Tsern, Krzyzanowski,
Arling, Ansari, Pierre,
Rosenblatt, Dresti, Huang
9
Appeal 2019-001479
Application 12/895,321

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–3, 6–9,
11–13, 15–
18, 20–24

REHEARING DENIED