2018006174 (P.T.A.B. May. 11, 2020)

Yehuda Binder

Patent Trials and Appeals BoardMay 11, 2020

2018006174 (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. 15/002,425 01/21/2016 Yehuda BINDER BINDER-006-US8 1044 131926 7590 05/11/2020 May Patents Ltd. c/o Dorit Shem-Tov P.O.B 7230 Ramat-Gan, 5217102 ISRAEL EXAMINER BUKOWSKI, KENNETH ART UNIT PAPER NUMBER 2621 MAIL DATE DELIVERY MODE 05/11/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YEHUDA BINDER Appeal 2018-006174 Application 15/002,425 Technology Center 2600 Before JOSEPH L. DIXON, JASON J. CHUNG, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the Decision entered March 27, 2020. In the Decision, we affirmed the Examiner’s rejections of Claims 2–53 under 35 U.S.C. § 103. 37 C.F.R. § 41.52(a)(1) states, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board” and must not raise new arguments unless they fall within one of the exceptions permitted by 37 C.F.R. §§ 41.52(a)(2) through 41.52(a)(4). 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 May Patents Ltd. Appeal Br. 2. Appeal 2018-006174 Application 15/002,425 2 We have reviewed the Request for Rehearing and have determined that Appellant has not identified, with particularity, any points Appellant believes the Board has misapprehended or overlooked in reaching its Decision. For example, Appellant argues that “the Decision improperly provides at least four different definitions of the ‘field of endeavor’ for the Trovato and Xu references for justifying combination of references.” Req. Reh’g 2 (emphasis omitted). Appellant also argues “the field definitions seems to be improperly hindsight-based as they are derived from the claim limitations themselves.” Req. Reh’g 3. Appellant additionally argues, “[t]he Decision does not provide ANY field definition of the claimed subject matter field of endeavor, and actually admits that the references are directed to different fields, hence cannot be analogous to the SAME field of the claimed invention.” Req. Reh’g 5. Appellant further argues, “in different decisions of the same family of applications, relating to same reference, the PTAB provided different field definitions.” Req. Reh’g 4 (emphases omitted). Additionally, Appellant argues that certain statements in the Decision pertaining to the combination of references are “improper and hindsight based” and amount to a “failure to answer the substance of Applicants’ arguments.” Req. Reh’g 5, 6. Finally, Appellant argues that most of the arguments in the Examiner’s Answer to the Appeal Brief are “conclusory and provided no more than repeating the Final Action arguments” and that such an Answer is insufficient to merit a Reply Brief. Req. Reh’g 7. Nevertheless, Appellant has not identified, in any of these arguments and with particularity, any points made by Appellant in the Appeal Brief that the Board has misapprehended or overlooked in reaching its Decision. Indeed, Appellant does not identify where any of its arguments were Appeal 2018-006174 Application 15/002,425 3 previously made. See generally Req. Reh’g; cf. 37 C.F.R. § 41.52(a)(1) (“Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.”). We could not have misapprehended or overlooked an argument that Appellant never presented. Moreover, as noted in the Decision (see Dec. 6), we were not persuaded by Appellant’s arguments in the Appeal Brief of Examiner error in the factual findings or ultimate conclusion of obviousness. Because Appellant did not file a Reply Brief with arguments rebutting the Examiner’s additional responses and clarifications in the Answer, we based our Decision only on the issues raised in the Appeal Brief. In the Request for Rehearing, Appellant attempts to identify inconsistencies among identified fields of endeavor and show that the art is not analogous to the claimed invention. Appellant also attempts to identify different interpretations of a reference in other appeals with different claims and rejections. However, Appellant does not identify the relevance of these arguments to any points the Board misapprehended or overlooked in reaching the Decision. Moreover, the statements in the Decision referenced by Appellant (see Req. Reh’g 2) were not findings of field of endeavor or a finding that the references are analogous art. Instead, these statements illustrate why we were not persuaded by Appellant’s rebuttal arguments. Dec. 6. Therefore, because Appellant has not identified, with particularity, any points Appellant believes that Board has misapprehended or overlooked in reaching its Decision and has not provided new arguments permitted by 37 C.F.R. §§ 41.52(a)(2) through 41.52(a)(4), we deny the Request for Rehearing. CONCLUSION Appeal 2018-006174 Application 15/002,425 4 Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/ Basis Denied Granted 2–15, 25, 30–34 103 Trovato, Xu 2–15, 25, 30–34 16–20, 22 103 Trovato, Xu, Kato 16–20, 22 21 103 Trovato, Xu, Underkoffler 21 23, 26, 27 103 Trovato, Xu, Wilson 23, 26, 27 24 103 Trovato, Xu, Kitaura 24 28, 29, 35, 45, 50–52 103 Trovato, Xu, Appellant’s Admitted Prior Art 28, 29, 35, 45, 50–52 36–44 103 Trovato, Xu, Appellant’s Admitted Prior Art, Binder 36–44 47–49 103 Trovato, Xu, Appellant’s Admitted Prior Art, Cho 47–49 46, 53 103 Trovato, Xu, Appellant’s Admitted Prior Art, Wilson 46, 53 Overall Outcome 2–53 Appeal 2018-006174 Application 15/002,425 5 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–15, 25, and 30– 34 103 Trovato, Xu 2–15, 25, 30–34 16–20, 22 103 Trovato, Xu, Kato 16–20, 22 21 103 Trovato, Xu, Underkoffler 21 23, 26, 27 103 Trovato, Xu, Wilson 23, 26, 27 24 103 Trovato, Xu, Kitaura 24 28, 29, 35, 45, 50–52 103 Trovato, Xu, Appellant’s Admitted Prior Art 28, 29, 35, 45, 50–52 36–44 103 Trovato, Xu, Appellant’s Admitted Prior Art, Binder 36–44 47–49 103 Trovato, Xu, Appellant’s Admitted Prior Art, Cho 47–49 46, 53 103 Trovato, Xu, Appellant’s Admitted Prior Art, Wilson 46, 53 Overall Outcome 2–53 DENIED