Benjamin Hill

Patent Trials and Appeals BoardApr 27, 2021

2020003857 (P.T.A.B. Apr. 27, 2021)

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. 14/015,154 08/30/2013 Benjamin R. Hill HILL-101 9652 116025 7590 04/27/2021 Robert Klinger, Esq. C/o Culhane Meadows PLLC 2591 Dallas Parkway Suite 300 Frisco, TX 75034 EXAMINER WHITAKER, JONATHAN J ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 04/27/2021 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): eOfficeAction@AppColl.com patentdocket@cm.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BENJAMIN R. HILL ___________ Appeal 2020-003857 Application 14/015,154 Technology Center 3600 ____________ Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and ERIC B. CHEN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CHEN. Opinion Dissenting filed by Administrative Patent Judge BAUMEISTER. CHEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our Decision on Appeal entered February 10, 2021 (“Decision” or “Dec.”), in which we affirmed the Examiner’s non-final rejection of claims 1, 4–13, and 16–25. The Request for Rehearing is denied. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § l.42(a). Appellant identifies the real party in interest is the inventor, Benjamin R. Hill. (Appeal Br. 3.) Appeal 2020-003857 Application 14/015,154 2 OPINION Kosashvili Appellant argues that “[r]eferring to Kosashvili as teaching the limitation ‘the scheduler component receiving data from said function and an operating system’ is not supported by substantial evidence.” (Req. Reh’g 9 (emphasis omitted); see also id. at 2.) In particular, Appellant argues that “[a] search of Kosashvili indicates that Kosashvili makes no reference to the operating system” and “a program that keeps track of the device drivers would suffice [e.g., Kiwi Application Monitor and Bill2’s Process Manager], and that program should be doable without communicating with the operating system.” (Id. at 8–9 (emphasis omitted).) Similarly, Appellant argues that following: Anyone of ordinary skill in the art would know that almost all systems that take input from the user need an operating system. Anyone of ordinary skill in the art would know that having an operating system does not mean that every application acquires data from the operating system. To acquire data from the operating system requires additional and very specialized programming. (Id. at 9.) With respect to the “substantial evidence” standard, the Supreme Court has articulated the following: Substantial evidence is more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion . . . . Mere uncorroborated hearsay or rumor does not constitute substantial evidence. Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229–30 (1938) (quoted in In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). Moreover, the “substantial evidence” standard is the correct standard of review for PTAB Appeal 2020-003857 Application 14/015,154 3 factual findings under the Administrative Procedure Act (APA). Gartside, 203 F.3d at 1315. To satisfy the substantial evidence test, “the Board [or Examiner] must point to some concrete evidence in the record in support of these findings.” In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). “[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.” Consolo v. Fed. Maritime Comm’n, 383 U.S. 607, 620 (1966) (quoted in Gartside, 203 F.3d at 1312). The Examiner’s Answer states the following: Figure 2 of Kosashvili depicts a detection module [202] and scheduler component [206] in communication with an operating mobile device . . . Kosashvili explicitly states that the client application has a detection module [202] which intercepts all device activities for identifying new activated actions/function of the mobile device. . . . The examiner interprets this figure and passage as disclosing a client application with scheduler component that receives data from the operating system of a mobile device through the interception of all device activities of new activated actions/functions of the mobile device. (Ans. 9.) Thus, in citing Figure 2 of Kosashvili, in which a client application, having detection module 202 and scheduler component 206, such that the client application resides on a mobile device having an operating system,2 the Examiner has provided “substantial evidence” to support a finding that Kosashvili teaches the limitation “the scheduler component receiving data from said function and an operating system.” 2 One of ordinary skill in the art would have recognized that the mobile device of Kosashvili includes an operating system, as evidenced by paragraph 5 of Ricasata. Appeal 2020-003857 Application 14/015,154 4 Even if Appellant is correct that “a program that keeps track of the device drivers would suffice, and that program should be doable without communicating with the operating system” (Req. Reh’g 8) and “[a]nyone of ordinary skill in the art would know that having an operating system does not mean that every application acquires data from the operating system” (id. at 9 (emphasis omitted)), the Supreme Court has articulated that “the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.” Consolo, 383 U.S. at 620. Moreover, Appellant’s argument that “[t]o acquire data from the operating system requires additional and very specialized programming” (Req. Reh’g 9 (emphasis added)) is directly contradicted by Appellant’s statement that “receiving data from the operating system is something that one of ordinary skill in the art can do and only involves the inventor’s program (code)” (id. at 11 (emphasis added)). Ricasata and Grundfast Appellant further argues that “Grundfast does not teach or suggest a scheduler component receiving data from the operating system of the mobile device” and “that neither Ricasata nor Kosashvil[i] nor Grundfast teach or suggest a scheduler component receiving data from said function and an operating system.” (Req. Reh’g 11 (emphasis omitted).) A request for rehearing must “state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52. Appellant’s argument is not persuasive because it was considered and addressed in our Decision: Appeal 2020-003857 Application 14/015,154 5 Appellant argues that “neither Ricasata nor Kosashvil[i] nor Grundfast teach or suggest a scheduler component receiving data from said function and an operating system.” (Appeal Br. 39; see also Reply Br. 8.) However, other than merely providing a conclusory statement that Kosashvili does not teach the limitation “the scheduler component receiving data from said function and an operating system,” Appellant does not provide any persuasive arguments or evidence as to why the Examiner’s findings with respect to paragraph 40 of Kosashvili, are erroneous. (Dec. 17–18.) Thus, Appellant’s argument reiterates an argument that was previously presented, but fails to “state with particularity the points believed to have been misapprehended or overlooked by the Board,” as required by 37 C.F.R. § 41.52. CONCLUSION The Request for Rehearing has been considered and is denied. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 4–8, 10–13, 16–25 103(a) Ricasata, Kosashvili, Grundfast 1, 4–8, 10–13, 16–25 9 103(a) Ricasata, Kosashvili, Grundfast, Gupta 9 Overall Outcome 1, 4–13, 16–25 Appeal 2020-003857 Application 14/015,154 6 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–8, 10– 13, 16–25 103(a) Ricasata, Kosashvili, Grundfast 1, 4–8, 10– 13, 16–25 9 103(a) Ricasata, Kosashvili, Grundfast, Gupta 9 Overall Outcome 1, 4–13, 16–25 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED Appeal 2020-003857 Application 14/015,154 7 BAUMEISTER, Administrative Patent Judge, dissenting. Upon reconsideration, Appellant persuades me that the Examiner has not established a prima facie showing of obviousness. That is, the Examiner has not established that Kosashvili teaches or reasonably suggests the disputed claim language, “the scheduler component receiving data from . . . an operating system.”3 The Examiner relies on Kosashvili’s paragraphs 39 and 40 and Figure 2 for teaching this limitation. Final Act. 15, cited in Appeal Br. 33. But these cited portions of Kosashvili do not reasonably teach or suggest that the scheduler component receives data specifically from an operating system. Kosashvili merely discloses, “[t]he detection module 202 intercepts all device activities for identifying new activated actions/function of the mobile device . . . . For each activated function, the module verifies authorization to change the display layout design according to user authorization preferences.” Kosashvili ¶ 40 (emphasis added). To be sure, it might be theoretically possible for Kosashvili’s detection module to receive data from an operating system. But without additional facts, such a conclusion merely constitutes unsupported surmise. And “[a] rejection based on section 103 clearly must rest on a factual basis.” 3 Although not dispositive of the issue raised on appeal, I question whether the disputed claim language really intends to recite that the scheduler receives data from the function, as well as the operating system. In particular, I question whether the claim actually intends to recite that the scheduler receives data from the function application, as opposed to the function. See, e.g., Req. Reh’g 5 (“One of ordinary skill in the art would know that . . . the scheduler component receives data from the function application and the operating system.”) (emphasis added). This ambiguity should be clarified upon any further prosecution. Appeal 2020-003857 Application 14/015,154 8 In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Furthermore, the Majority is wrong in citing In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) for the proposition that the Board applies the substantial-evidence standard when reviewing an examiner’s factual findings. Gartside addresses what the appropriate standard of judicial review is for the courts reviewing the PTO’s findings of fact. Gartside, 203 F.3d 1305 at 1311. But the burden of proof that the Board uses when reviewing an examiner’s rejection differs from the judicial-review standard that courts use when reviewing an agency’s fact finding: The elementary but crucial difference between burden of proof and scope of review is, of course, a commonplace in the law. The difference is most graphically illustrated in a criminal case. There the prosecution is generally required to prove the elements of the offense beyond a reasonable doubt. But if the correct burden of proof was imposed at the trial, judicial review is generally limited to ascertaining whether the evidence relied upon by the trier of fact was of sufficient quality and substantiality to support the rationality of the judgment. In other words, an appellate court in a criminal case ordinarily does not ask itself whether it believes that the evidence at the trial established guilt beyond a reasonable doubt, but whether the judgment is supported by substantial evidence. Woodby v. INS, 385 U.S. 276, 282 (1966) (footnotes omitted). In contrast to the judicial review of agency fact finding that is performed by the courts, the Patent Trial and Appeal Board reviews the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. See Ex Parte Appeal 2020-003857 Application 14/015,154 9 Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Board then determines whether the Examiner has met the burden of proving non- patentability based upon the preponderance of evidence. In re Caveney, 761 F.2d 671 (Fed. Cir. 1985). In the present case, it actually does not make a difference whether we consider the rejection based upon a preponderance of evidence or based upon substantial evidence. The Examiner has failed to establish a prima facie case of obviousness under either standard because the Examiner only provides evidence that Kosashvili receives data from the function application. Final Act. 15 (citing Kosashvili ¶¶ 39, 40; Fig. 2). The Examiner provides insufficient evidence that Kosashvili additionally receives data specifically from the operating system. See id. I also disagree with the Majority’s following determination: Appellant’s argument that “[t]o acquire data from the operating system requires additional and very specialized programming” (Req. for Reh’g 9 (emphasis added)) is directly contradicted by Appellant’s statement that “receiving data from the operating system is something that one of ordinary skill in the art can do and only involves the inventor’s program (code).” Majority Opinion 4. I understand Appellant’s argument to be as follows: one of ordinary skill would have known how to receive data from the operating system if one had thought of doing so—e.g., if one had had the benefit of reading Appellant’s disclosure. Req. for Reh’g 9. But if one of ordinary skill would have thought of receiving data from the operating system, one would have understood that a particular type of specialized programming is required to receive data from the operating system. Id. And one of ordinary skill would have understood that Kosashvili does not provide any teaching or suggestion Appeal 2020-003857 Application 14/015,154 10 to employ this sort of specialized programming or to receive data specifically from the operating system. For these reasons, I would grant Appellant’s request for rehearing and reverse the obviousness rejections.