Ex Parte 7,677,948 B2 et alDownload PDFPatent Trial and Appeal BoardApr 20, 201595001341 (P.T.A.B. Apr. 20, 2015) Copy Citation 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. 95/001,341 04/20/2010 7,677,948 B2 GANZ-36219US23 6099 26206 7590 04/21/2015 Pearne & Gordon LLP 1801 East 9th Street Suite 1200 Cleveland, OH 44114-3108 EXAMINER KISS, ERIC B ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/21/2015 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 ____________ HASBRO, INC., Requester, v. GANZ, Patent Owner. ____________ Appeal 2014-002518 Reexamination Control 95/001,341 Patent 7,677,948 B2 Technology Center 3900 ____________ Before JAMES T. MOORE, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-002518 Application 95/001,341 2 BACKGROUND On October 31, 2012, the Board reversed the Examiner’s decision that the claims 1–31 and 33–68 of U.S. Patent No. 7,677,948 B2 (the ’948 patent) were patentable but presented new grounds of rejection for these claims. Pursuant to 37 C.F.R. § 41.77(f), the proceeding returned to the Board to reconsider the matter and issue a new decision. On April 1, 2014, we affirmed the Examiner’s decision to reject claims 1–31 and 33–68. Patent Owner files a “Request for Rehearing” of the April 1, 2014 decision (Req. Reh’g), questioning the status of the present matter. In particular, Patent Owner requests clarification as to whether prosecution was, in fact, “reopened,” whether the Examiner considered the new claim amendments, whether claim amendments submitted in Request to Reopen Prosecution After Decision by the Patent Trial and Appeal Board (PTAB), dated November 30, 2012 (“Request”) were entered, and whether a Declaration of Karl Borst (“Borst Declaration”), which Patent Owner asserts was filed November 18, 2013, was considered. Req. Reh’g 4-8. We provide the following clarification. Prosecution was indeed “reopened” pursuant to 37 C.F.R. §§ 41.77(b)(1) and 41.77(d) (see, e.g., “Order Remanding Inter Partes Reexamination,” dated July 31, 2013 (“Remand Order”) and Examiner’s Determination under 37 C.F.R. § 41.77(d) dated October 19, 2013 (“Examiner’s Determination”)), the Examiner considered Patent Owner’s claim amendments (see, e.g., Examiner’s Determination), and Patent Owner’s amendments to claims 1, 16, 35, and 43, as submitted in the Request, were entered (see, e.g., Remand Appeal 2014-002518 Application 95/001,341 3 Order, Examiner’s Determination, or the Decision, dated April 1, 2014 (“Decision II”)). The “Borst Declaration” was filed November 18, 2013 with the Response After Decision Under 37 C.F.R. § 41.77(d), in response to the Examiner’s Determination. We note that 37 C.F.R. § 41.77(b)(1) states that the Patent Owner may “file a response requesting reopening of prosecution before the examiner” and that the response “must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.” Patent Owner does not indicate that the Borst Declaration was filed under 37 C.F.R. § 41.77(b)(1) as new evidence. Instead, Patent Owner states that the Borst Declaration was filed November 18, 2013, which is in response to the Examiner’s Determination (i.e., filed pursuant to 37 C.F.R. § 41.77(e)). We note that 37 C.F.R. § 41.77(e) states that “the owner . . . may once submit comments in response to the examiner’s determination [under 37 C.F.R. § 41.77(d)]” but does not permit Patent Owner to file new evidence (e.g., the Borst Declaration). Hence, the Borst Declaration is untimely filed and is not considered. In any event, Patent Owner’s opportunity to file the Borst declaration was with the Request. On the record, Patent Owner does not cite to, refer to, or otherwise rely on the Borst Declaration in the Request. See, e.g., Decision, dated October 31, 2012 (“Decision I”), Request, Remand Order, Examiner’s Determination, and Decision II. Patent Owner also reiterates previously presented arguments and asserts that we refused consideration of the arguments. Each of these Appeal 2014-002518 Application 95/001,341 4 arguments was previously addressed. Patent Owner restates the following arguments: 1) “[T]he Board . . . did not put the Patent Owner on notice of a rejection.” Req. Reh’g 9. See also Decision II 3-4. 2) The cited references fail to disclose or suggest a “user account.” Req. Reh’g 10. See also Decision II 4, Decision I 4-6. 3) The cited references fail to disclose or suggest purchase information stored in memory. Req. Reh’g 10-11 (citing Decision II 5). See also Decision II 5-6. 4) It would not have been obvious to one of ordinary skill in the art to combine the cited references. Req. Reh’g 11. See also Decision II 6. 5) The cited references fail to disclose registering a second product. Req. Reh’g 11-12 (citing Decision II 6). See also Decision II 6-7, Decision I 8-9. 6) The cited references fail to “recognize[] the need or problem to save the password such that it would not need to be entered again.” Req. Reh’g. 12 (citing Decision II 8). See also Decision II 6-7, Decision I 6-9. 7) The cited references fail to disclose switching control from one virtual representation to the other. Req. Reh’g 12 (citing Decision II 7). See also Decision II 7, Decision I 9. Appeal 2014-002518 Application 95/001,341 5 8) The cited references fail to disclose linking the first registration code to the user account. Req. Reh’g 13 (citing Decision II 8). See also Decision II 8, Decision I 4-6. 9) The cited references fail to disclose linking the first and second products. Req. Reh’g 13 (citing Decision II 8). See also Decision II 9, Decision I 8-9. 10) The cited references fail to disclose moving the virtual representation. Req. Reh’g 13 (citing Decision II 9). See also Decision II 9-10. As stated and indicated above with reference to Decisions I and II, all of these issues were previously addressed in detail. Patent Owner does not demonstrate persuasively that we overlooked or misconstrued any points regarding these issues. For at least the foregoing reasons, Patent Owner’s Request for Rehearing is denied. REHEARING DENIED Appeal 2014-002518 Application 95/001,341 6 ack for PATENT OWNER: PEARNE & GORDON LLP 1801 EAST 9TH STREET CLEVELAND, OH 44114-3108 for THIRD PARTY REQUESTER: PERKINS COIE L.L.P. P.O. BOX 1208 SEATTLE, WA 98111-1208 Copy with citationCopy as parenthetical citation