COREL SOFTWARE LLC (ASSIGNEE) et al.

Patent Trials and Appeals BoardApr 20, 2021

2020004978 (P.T.A.B. Apr. 20, 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. 90/014,266 02/20/2019 8700996 44-10263 1071 135533 7590 04/20/2021 Carmichael IP, PLLC 8000 Towers Crescent Drive, 13th Floor Tysons Corner, VA 22182 EXAMINER BONSHOCK, DENNIS G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/20/2021 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 COREL SOFTWARE LLC Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 Technology Center 3900 Before ALLEN R. MacDONALD, JAMES A. TARTAL, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE This case involves reexamination of issued claims 5 and 18 in expired U.S. Patent No. 8,700,996 B2. After an oral hearing, we affirmed one of the Examiner’s rejections on both pending claims in a Decision mailed on December 31, 2020. Appellant now requests rehearing under 37 C.F.R. § 41.52 asking us to designate the Decision as containing a new ground of rejection under 37 C.F.R. § 41.50(b). For the reasons discussed below, we grant Appellant’s Request. Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 2 DISCUSSION In the Request, Appellant asks that we designate the Decision as containing a new ground of rejection for going beyond the Examiner’s rejection in three ways: (1) “a new rationale for applying estoppel”; (2) “a new finding of fact that CorelDRAW by itself suggests a hover-based preview system”; and (3) “a new . . . reason to combine references.” Request 2–4. Legal Background of New Grounds The Federal Circuit has explained the proper application of new grounds as follows: When the Board relies upon a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or to request a rehearing. 37 C.F.R. § 41.50(b). This court has stated that the thrust of the Board’s rejection changes when it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based. The ultimate criterion of whether a rejection is considered ‘new’ in a decision by the Board is whether applicants have had fair opportunity to react to the thrust of the rejection. In re Adler, 723 F.3d 1322, 1327 (Fed. Cir. 2013) (quotations omitted). “A new ground of rejection, however, generally will not be found based on the Board further explaining the examiner’s rejection or the Board’s thoroughness in responding to an applicant’s argument.” Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1357 (Fed. Cir. 2017) (quotation omitted). Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 3 Estoppel First, for estoppel, Appellant argues that “the only estoppel rationale invoked by the examiner was . . . under the specific provisions of 37 C.F.R. § 42.73(d)(3)(i), not the general provisions of 37 C.F.R. § 42.73(d)(3)” relied upon by the Board in the Decision. Request 5. Substantively, Appellant also argues that “the examiner limited the estoppel to arguing for claims that are not patentably distinct from canceled claims under the specific provisions of 37 C.F.R. § 42.73(d)(3)(i)” and “did not use the general estoppel provisions of 37 C.F.R. § 42.73(d)(3) to dismiss Corel’s arguments in this reexamination due to statements in the preliminary IPR institution decision.” Request 8–9. The relevant portions of § 42.73(d), (d)(3), and (d)(3)(i) state the following: (d) Estoppel. . . . (3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim; or (ii) An amendment of a specification or of a drawing that was denied during the trial proceeding . . . . Sub-sections (i) and (ii) thus are non-exhaustive examples of the more general estoppel in § 42.73(d)(3). See also Decision 9 (“Appellant’s narrow focus on the single example provided in sub-section (i) ignores the broader language in § 42.73(d)(3).”). Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 4 Although the Examiner did cite and quote § 42.73(d)(3) more broadly (Final Act. 39; Ans. 40), we agree with Appellant that the Examiner’s substantive discussion focused on whether the reexamination claims were “patentably distinct” from canceled claims, i.e., the specific example provided in sub-section (i), rather than the broader estoppel in § 42.73(d)(3). In the interests of giving Appellant an opportunity to address § 42.73(d)(3) more broadly if Appellant so chooses, we therefore grant Appellant’s request to designate our Decision as containing a new ground. New Portions of CorelDRAW Second, for the obviousness rejection over CorelDRAW, IBM, and Crawford, Appellant argues “[t]he Board found new facts when it concluded CorelDRAW by itself suggested activation of a preview by hovering over the name of the font in a dropdown menu” whereas the Examiner “instead relied on a combination of references for this feature.” Request 10 (citing Decision 21, 22). According to Appellant, the Examiner “found CorelDRAW was ‘unclear’ about how a command could be selected without a click and cause a preview” so “relied on different art [i.e., IBM and Crawford] that ‘fills in the blanks’ of CorelDRAW.” Request 11. Appellant’s argument is not persuasive. The cited portion of the Decision discusses Appellant narrowly focusing on CorelDRAW’s Figure 9- 23 and ignoring Figure 5-9. Decision 21–22. The Examiner at multiple points not only cited CorelDRAW’s Figure 5-9 but also included a screenshot of it and stated that Figure 5-9 must be considered as further evidence for why hovering would have been obvious in CorelDRAW. For example, the Answer states that “CorelDRAW describes identifying menu Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 5 commands such as font commands by hovering over them” and then prefaces a screenshot of Figure 5-9 by stating, “An image showing highlighting of font commands in response to hovering the mouse is illustrated below.” Ans. 170 (citing “Ex. 1007 at 190-191”). Similar discussions and screenshots of CorelDRAW’s Figure 5-9 occur repeatedly throughout the Examiner’s analysis. E.g., Ans. 176, 171, 113–14. The Decision therefore relied on findings the Examiner expressly made in the Answer and did not change the thrust of the rejection, and Appellant already had a fair opportunity to respond to the Examiner’s findings regarding CorelDRAW’s Figure 5-9 teaching or suggesting hovering. The Board relying on fewer than all of the references or findings of the Examiner, without more, does not give rise to a new ground. E.g., In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“the answer specified a rejection on Whitney in view of Harth and if the board found it unnecessary to rely on Harth in sustaining that rejection, as it appears to have done, that does not amount to rejection on a new ground”); In re Kronig, 539 F.2d 1300, 1302– 03 (CCPA 1976) (holding that even though the Board relied on fewer than all references in an obviousness rejection, “[t]he basic thrust of the rejection at the examiner and board level was the same, and we believe that appellants have had fair opportunity to react to that rejection”); see also MPEP § 1207.03(A)(II)(3) (explaining why “[r]elying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings” is one of the “Factual Situations That Do Not Constitute a New Ground of Rejection”). Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 6 New Rationale to Combine Third, for the same obviousness rejection, Appellant argues that the Board “propounded a new rationale by saying ‘the ease of merely moving the mouse away if the user does not like the font shown in the preview’ motivated combining CorelDRAW, IBM, and Crawford to provide a predetermined length of time.” Request 13–14 (quoting and discussing Decision 24). According to Appellant, “[w]hile the examiner did include the language ‘If this effect is not desired, the command can be declined by simply dragging away’ within several long block quotes of IBM, the examiner never presented this as a reason to combine with the other references, and explicitly presented a list of reasons to combine that did not include this ‘simply dragging away.’” Request 15 (footnote omitted; citing Ans. 23, 168–69). As Appellant concedes, IBM discloses—and the Examiner quotes— that “[i]f this effect [in the preview] is not desired, the command can be declined by simply dragging away.” IBM 3–4; Ans. 23, 168–69. The Examiner immediately follows this up by saying IBM “teaches a broader suggestion to ordinary artisans that was predictably applied in applications throughout the mid 1990s—namely, that ‘any graphic effects of actions should be visible before button release.’” Ans. 169. Showing a preview when hovering over a command and not showing the preview when not hovering over the command are two sides of the same coin, and we view IBM’s disclosure (i.e., that a preview command initiated by hovering over the command can be declined by simply dragging the mouse away) as a previously discussed example for multiple of the Examiner’s stated reasons to combine, including to “advantageously ‘provid[e] visual feedback before Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 7 a [command] is completed’ so that the user can be ‘certain of the effects’ of the identified command font” (e.g., being certain that the command will not be executed if the mouse is moved away and the preview goes away), “so that the user could better visualize the effect on the actual document before final acceptance of the formatting change” (e.g., visually seeing the text with and without the effect by moving on or off the command), and “to enhance the user interface experience and comfort level with the software” (e.g., reassuring the user that the command will not be applied if the mouse is dragged away and the preview goes away). Ans. 169–73. Given that the Examiner expressly quoted this teaching in IBM and it relates to the broad reasons already set forth in the Examiner’s Answer, we are not persuaded by Appellant’s argument that this was a “new rationale” or that Appellant “did not have a fair chance to address the Board’s new rationale.” Request 17; see also Honeywell, 865 F.3d at 1357 (“A new ground of rejection . . . generally will not be found based on the Board further explaining the examiner’s rejection or the Board’s thoroughness in responding to an applicant’s argument.”). Moreover, Appellant acknowledges that this specific point was only one of multiple reasons to combine noted by the Board and the Examiner. E.g., Request 15 (“In particular, the examiner presented a long list of motivations for the combination”), 14 (quoting Decision 24). Nevertheless, because we are already designating the rejection a new ground for other reasons, we will designate it a new ground on this basis as well should Appellant want to more specifically address this narrow point further. Appeal 2020-004978 Reexamination Control 90/014,266 Patent 8,700,996 B2 8 OUTCOME The following table summarizes the outcome of the request for rehearing: Claims Rejected 35 U.S.C. § References Granted Denied 5, 18 103 CorelDRAW, IBM, Crawford 5, 18 The following table summarizes the outcome of the appeal after rehearing: Claims Rejected 35 U.S.C. § References Affirmed Reversed New Ground 5, 18 103 CorelDRAW, IBM, Crawford 5, 18 5, 18 5, 18 103 QuarkXPress1, QuarkXPress2, IBM, Crawford 5, 18 Overall Outcome 5, 18 5, 18 TIME TO RESPOND Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). GRANTED; 37 C.F.R. § 41.50(b) Third Party Requestor: Carmichael IP, PLLC 8000 Towers Crescent Drive, 13th Floor Tysons Corner, VA 22182