Ex Parte Agarwal et al

Patent Trial and Appeal BoardNov 3, 2016

13485141 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/485,141 05/31/2012 SHUB HAM AGARWAL 52021 7590 11/07/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IN920110244US1_8150-0191 2242 EXAMINER GIDDINS, NELSONS ART UNIT PAPER NUMBER 2437 NOTIFICATION DATE DELIVERY MODE 11/07/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUBHAM AGARWAL, MANU KUCHHAL and SHAILENDRA KUMAR SASON Appeal2015-001217 Application 13/485, 141 Technology Center 2400 Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and TERRENCE W. McMILLIN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellants request rehearing of the Patent Trial and Appeal Board's ("Board") Decision mailed August 9, 2016 ("Decision") in which we affirmed the rejections of claims 2, 10, and 12 underÂ§ 103 as being unpatentable over various combinations of Phillips et al. (US 2012/0066610 Al, Mar. 15, 2012), Morris (US 2011/0252356 Al, Oct. 13, 2011), and Maciocci (US 2009/0287646 Al, Nov. 19, 2009) (see Final Act. 13, 23). Appeal2015-001217 Application 13/485,141 ANALYSIS In the Request for Rehearing ("Request"), Appellants allege that the Board overlooked arguments "presented by Appellants in the Reply Brief regarding the distinction between the term 'native application' and the term 'web application"' (Req. 7). Specifically, Appellants argue that arguments in the Reply Brief regarding native application and web application terminology were "in response to the new arguments for claim 10 and claim 2 originally raised in the Examiner's Answer" (id.). We disagree. As an initial matter, we find that Appellants merely make a conclusory statement regarding the Examiner raising additional issues in the Answer (see Reply Br. 1 ), because Appellants fail to direct our attention to any additional findings made by the Examiner regarding a "native application." Instead, the Examiner relies on Maciocci, not Phillips, to teach the claimed native application (see Final Act. 17). Specifically, the Examiner cites to Figures 1, 2, and 3, and Paragraph 68, ofMaciocci in the Final Rejection (see id.), and to Paragraphs 32 and 55 of Maciocci in the Examiner's Answer (see Ans. 13). Appellants, in the Reply Brief, cite Appellants' Specification to define "native application" and "web application," and contend Phillips' web applications cannot teach both the claimed "web application" and the claimed "native application" (Rep. Br. 5- 6). The Examiner does not use Phillips to teach or suggest the claimed "native application." Thus, the problem with this argument, as highlighted in our Decision, is that the argument pertaining to the Phillips reference, rather than the cited paragraphs in the Maciocci reference, is not necessitated by the Examiner's response and is instead a belated argument introduced for 2 Appeal2015-001217 Application 13/485,141 the first time in the Reply Brief (see Decision 8). See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also 37 C.F.R. Â§ 41.41 (b )(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown" (emphasis added)). In other words, Appellants' arguments regarding the claimed native application are not responsive to, and thereby are not necessitated by, the Examiner's findings in the Examiner's Answer. Furthermore, the Examiner's additional citations from the Maciocci reference do not constitute new grounds. The Examiner cites to Figures 1, 2, and 3 in the Final Rejection (see Final Act. 17). The paragraphs additionally cited by the Examiner in the Examiner's Answer, Paragraphs 32 and 55, are associated with previously cited Figures 1 and 3, respectively (see Ans. 13; see also Maciocci i-fi-129--32, 49--55). In other words, the Examiner's additional citations to Paragraphs 32 and 55 merely elaborate upon what is taught in the previously cited Figures 1 and 3 of Maciocci. Therefore, for at least the aforementioned reasons, we find unavailing Appellants' contention that the new arguments were necessitated by the Examiner's Answer. DECISION Accordingly, we have granted Appellants' Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. 3 Appeal2015-001217 Application 13/485,141 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). REHEARING DENIED 4