Ex Parte 7266786 et al

Patent Trial and Appeal BoardOct 31, 2017

95000671 (P.T.A.B. Oct. 31, 2017)

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. 95/000,671 05/31/2012 7266786 ART-12-5016REX 4449 25226 7590 10/31/2017 MORRISON & FOERSTER LLP 755 PAGE MILL RD PALO ALTO, CA 94304-1018 EXAMINER SORRELL, ERON J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/31/2017 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 ____________ ARTERIS, INC. and QUALCOMM TECHNOLOGIES INCORPORATED, Requester, v. SONICS, INC., Patent Owner. ____________ Appeal 2017-010845 Inter partes Reexamination Control 95/000,671 Patent 7,266,786 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and IRVIN E. BRANCH, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge, BAUMEISTER Opinion Dissenting filed by Administrative Patent Judge, SIU BAUMEISTER, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 2 SUMMARY Jurisdiction of the present inter partes reexamination has been returned to the Board pursuant to 37 C.F.R. § 41.77(f) for reconsideration of the Examiner’s Determination regarding claim 42. Specifically, the Examiner finds that the most recent amendments to claim 42 overcome the rejection of that claim under 35 U.S.C. § 314 for improperly enlarging the scope of the claims of the ’786 Patent.1, 2 We affirm the Examiner’s determination. BACKGROUND On September 29, 2016, the Board issued a Decision in relation to the present inter partes reexamination (Bd. Dec.), reversing the Examiner’s rejection of claim 42 under 35 U.S.C. § 102(e) as anticipated by Krueger.3 Bd. Dec. 22. The Board also rejected Requester’s argument that the Examiner erred by failing to reject claim 42 under 35 U.S.C. § 112, ¶ 1, for lacking adequate written description support. Id. at 14–16. The Board additionally reversed the Examiner’s finding that the prior amendments to claim 42 overcame the prior rejection under 35 U.S.C. § 314 (pre-AIA) for improperly enlarging the scope of the claims of the ’786 Patent. Id. at 9–11. The Board designated the rejection under § 314 as a new ground of rejection pursuant to 37 C.F.R. § 41.77(a). Id. at 11. 1 The rejection for improperly enlarging the scope of the claims is based on the pre-America-Invents-Act (pre-AIA) version of 35 U.S.C. § 314, which sets forth requirements for inter partes reexaminations. 2 U.S. Patent No. 7,266,786 B2 (issued to Chou et al. September 4, 2007). 3 U.S. Patent No. 6,775,750 B2 (issued to Krueger August 10, 2004). Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 3 Neither Patent Owner nor Requester requested Rehearing of our September 29, 2016 Decision pursuant to 37 C.F.R. § 41.79. Instead, Patent Owner subsequently requested to reopen prosecution under 37 C.F.R. § 41.77(b)(1) in a Request filed October 28, 2016 (“First PO Request”). In the First PO Request, Patent Owner proposed amending claim 42 by adding certain claim language and deleting other language. Id. at 8–9. For the reasons explained in the subsequently issued Order Denying Patent Owner’s Request to Reopen Prosecution, mailed February 1, 2017 (“Order”), the Board found the proposed amendment to be defective and granted Patent Owner a single, non-extendable 14-day time period to once submit a corrected Request that corrected each identified deficiency. Patent Owner then filed Patent Owner’s Amendment and Request to Reopen Prosecution Pursuant to 37 C.F.R. § 41.77(b)(l) (“Second PO Request”) (filed February 14, 2017). In the Second PO Request, Patent Owner proposed amending claim 42 further to additionally address the deficiencies noted in the Board’s February 2017 Order. Second PO Request 8–9. In response, the Board remanded the inter partes reexamination to the Examiner for further consideration. See Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner. After the reexamination was remanded to the Examiner, Requester filed its Comments under 37 C.F.R. § 41.77(c), arguing inter alia that claim 42 lacked written description support for the “design time” limitation and that claim 42 was either anticipated or rendered obvious by Krueger. Requestor’s Comments to Patent Owner’s Amendment and Request Reopen Prosecution, filed February 28, 2017. Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 4 The Examiner reviewed Requester’s Comments and found that they were “not directed toward the new rejections set forth by the Board and thus not within the scope of [the Examiner’s] Determination.” Examiner’s Determination Under 37 C.F.R. § 41.77(d) at 9, mailed May 8, 2017 (Ex’r 41.77(d) Determ’n). The Examiner then determined that “the amendment to claim 42 overcomes the new rejection based on 35 U.S.C. § 314 set forth in the Board’s Decision mailed September 29, 2016.” Ex’r 41.77(d) Determ’n 10. Responsive to the Examiner’s Determination, Requester submitted the Requestor’s Comments to Examiner’s Determination pursuant to 37 C.F.R. § 41.77(e), filed June 8, 2017 (“3PR 41.77(e) Comments”). Therein, Requester notes that “[t]he Examiner’s Determination only addressed the issue of whether the amendments to claim 42 overcome the Board’s rejection under 35 U.S.C. §314.” 3PR 41.77(e) Comments 3. Requester does not dispute that the amendments overcome this rejection. See generally id. Requester instead argues that “claim 42 as amended in the PO Request presents other grounds upon which the claim should be rejected. Id. Requester then reasserts the arguments presented in Requester’s 41.77(c) Comments—that claim 42 lacked written description support for the “design time” limitation and that claim 42 was either anticipated or rendered obvious by Krueger. 3PR 41.77(e) Comments 3–11. Jurisdiction of the present inter partes reexamination is now returned to the Board pursuant to 37 C.F.R. § 41.77(f) for reconsideration of the Examiner’s most recent determination regarding claim 42. Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 5 PRINCIPLES OF LAW 35 U.S.C. § 314 (pre-AIA) Conduct of inter partes reexamination proceedings (a) IN GENERAL.— Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted. 37 C.F.R. § 41.77 Decisions and other actions by the Board. (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner’s determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. (b) Should the Board reverse the examiner’s determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 6 which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. (c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner’s response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board’s opinion reflecting its decision and the owner’s response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply. (d) Following any response by the owner under paragraph (b)(1) of this section and any written comments Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 7 from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome. (e) Within one month of the examiner’s determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner’s determination. Within one month of the date of service of comments in response to the examiner’s determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply. (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn. (g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 8 section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended. 37 C.F.R. § 41.79 Rehearing. (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a), (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2), (3) The expiration of the time for the owner to take action under § 41.77(b)(2), or (4) The new decision of the Board under § 41.77(f). (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted. (c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition to the request for rehearing or the further request for rehearing. Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 9 The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing. (d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section. (e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. ANALYSIS We agree with the Examiner (Ex’r 41.77(d) Determ’n 9) that Requester’s arguments are not within the scope of the present Determination. In the September 29, 2016 Board Decision, we designated only the rejection under 35 U.S.C. § 314 as a new ground. Bd. Dec. 22. The Majority’s findings and conclusions regarding the § 112, ¶ 1, rejection and the 102 rejection were not designated new grounds. Id. Furthermore, no obviousness rejection under 103(a) was ever before the Board. See generally Bd. Dec. As such, Requester’s appropriate recourse for challenging the Board’s September 29, 2016 Decision regarding the written- Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 10 description and anticipation rejections would have been to file a request for rehearing under 37 C.F.R. § 41.79(a) (1). Requester has pointed to no legal basis for challenging at this time, those previously adjudicated rejections, much less challenging at this time, Requester’s newly proposed obviousness rejection. To be sure, the amendment narrowing the claim language “at the design time” to now recite “at the design time of the device” (emphasis added) theoretically, at least, potentially could raise new written description issues that the prior, broader recitation did not present. However, Requester has not argued that newly added language is the specific basis of challenging the sufficiency of the Specification’s written description support. Rather, Requester only argues more generally that Patent Owner’s Specification does not provide adequate written description for the overall “design time” limitation. 3PR 41.77(e) Comments at 3–5. These arguments are either (1) substantially the same as the arguments Requester made prior to the September 29, 2016 Board Decision (Requestor’s Reply to Patent Owner’s Amendment in Response to Determination at 5, filed Nov. 9, 2015) or (2) arguments that Requester should have made following the September 29, 2016 in a Request for Rehearing pursuant to 37 C.F.R. § 41.79. CONCLUSION We affirm the Examiner’s determination that the amendments to claim 42 overcome the claim’s rejection under 35 U.S.C. § 314 (pre-AIA) for improper enlarging the scope of the claims of the ’786 Patent. Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 11 In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED Appeal 2017-010845 Reexamination Control 95/000,671 Patent 7,266,786 B2 12 Patent Owner: Christopher B. Eide Morrison & Foerster, LLP 755 Page Mill Road Palo Alto, CA 94304-1018 Third Party Requester: Jennifer Lacroix Patent Group DLA Piper (US) LLP 203 Lasalle Street Suite 1900 Chicago, IL 60601 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ARTERIS, INC. and QUALCOMM TECHNOLOGIES INCORPORATED, Requester, v. SONICS, INC., Patent Owner. ____________ Appeal 2017-010845 Inter partes Reexamination Control 95/000,671 Patent 7,266,786 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and IRVIN E. BRANCH, Administrative Patent Judges. SIU, Administrative Patent Judge I respectfully dissent from my colleagues’ conclusion of patentability of claim 42 for reasons previously provided in the dissenting decision dated September 30, 2016, incorporated herein in its entirety.