Starr, Ephraim D. et al.Download PDFPatent Trials and Appeals BoardMay 11, 20202019001479 (P.T.A.B. May. 11, 2020) Copy Citation 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. Appeal 2019-001479 Application 12/895,321 2 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). Appeal 2019-001479 Application 12/895,321 3 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. Appeal 2019-001479 Application 12/895,321 4 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). Appeal 2019-001479 Application 12/895,321 5 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). Appeal 2019-001479 Application 12/895,321 6 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 7 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 8 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 Copy with citationCopy as parenthetical citation