David Pullman

Patent Trials and Appeals BoardAug 2, 2019

14714482 - (R) (P.T.A.B. Aug. 2, 2019)

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. 14/714,482 05/18/2015 David Pullman 359.1001CON 5249 23280 7590 08/02/2019 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER MEINECKE DIAZ, SUSANNA M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID PULLMAN __________ Appeal 2017-004700 Application 14/714,4821 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE2 The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 of the Decision on Appeal. In the Decision on Appeal, the Board affirmed the rejection of independent claim 1, the only pending claim, under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter.3 1 According to Appellant, the real party in interest is inventor David Pullman. Appeal Br. 2. 3 The Decision also reversed the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). Appellant has not requested reconsideration of the rejection under § 103(a). Appeal 2017-004700 Application 14/714,482 2 We note at the outset that 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(a). A Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief or in the Reply Brief. Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id. To the extent the Appellant present supplemental or new arguments in the Request, those arguments are untimely and, as such, will not be considered except where the arguments are based on a recent relevant decision of either this Board or a federal court, or on an allegation that the Board’s decision contains an undesignated new ground of rejection. See id. Appellant argues that we misapprehended the basis for asserting that the claim limitations constitute analyzing information by steps people go through in their minds, or by mathematical algorithm, which without more, is essentially a mental process within the abstract idea category. (Request 2). Appellant argues that our opinion is contradictory because we found on page 11 of the Decision that the prior art does not disclose the selecting step recited in claim 1. We are at a loss to understand how our finding that the prior art does not disclose the subject matter of claim 1 is a finding that the claim limitations do not constitute analyzing information by steps people go through in their minds. Whether a claim recites subject matter that is disclosed in the prior art is a separate determination from whether a claim Appeal 2017-004700 Application 14/714,482 3 recites subject matter that constitute analyzing information by steps people go through in their minds. In addition, on page 6 of the Decision, the claim was also determined to be directed to a fundamental economic practice. Therefore, even if we misapprehended whether independent claim 1 is directed to steps that constitute analyzing information by steps people go through in their minds, we nonetheless affirmed the Examiner’s determination that claim 1 is directed to a fundamental economic practice which is a proper basis for determining that the claim is directed to a judicial exception. CONCLUSION We have carefully considered the Request but, for the foregoing reasons, we do not find it persuasive as to error in the Board’s decision to affirm the rejection of independent claim 1 under 35 U.S.C. § 101. DENIED