Ex Parte Behzad et al

Patent Trial and Appeal Board

Dec 22, 2017

12877941 (P.T.A.B. Dec. 22, 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.
12/877,941 09/08/2010 Arya Reza BEHZAD 2875.3540000 4083
26111 7590 12/26/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
KHAN, OMER S
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
12/26/2017 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
Ex parte ARYA REZA BEHZAD, MICHAEL BOERS,
JESUS ALFONSO CASTANEDA,
AHMADREZA (REZA) ROFOUGARAN,
and SAM ZIQUN ZHAO
Appeal 2015-007773
Application 12/877,941
Technology Center 2600
Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR., and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants’ Request for Rehearing.1 Appellants’
Request for Rehearing is filed under 37 C.F.R. § 41.52, requesting that we
reconsider and reverse our Decision of July 28, 2017 (“Decision”), wherein
we affirmed the rejections of claims 1—21 and 25—30. Appellants assert that
the Board affirmed the Examiner’s rejection on a “flawed premise” which
1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
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Application 12/877,941
had “already been resolved previously during prosecution” of the
application, and had overlooked certain of Appellants’ arguments. Request
5—7. Appellants also assert that the Board overlooked an argument relating
to the motivation to combine four references. Id. at 7—8. Additionally,
Appellants argue that we have misapprehended their statements with respect
to an alleged new ground of rejection of claim 25 which they assert had been
introduced in the Examiner’s Answer (id. at 8—9) and that we have
misapprehended the Examiner’s rejection of claim 25 and certain arguments
relating to it (id. at 9-11).
We have reconsidered our Decision in light of Appellants’ comments
in the Request. We herein reverse the Examiner’s rejection of claims 25, 26,
and 27. The rest of our Decision remains the same. We have maintained
our Decision to affirm the Examiner’s rejections of claims 1—21 and 28—30.
DISCUSSION
Selection Step — Schafer and Nanda
The Examiner relied on a combination of teachings of Schafer2 and
Nanda3 to teach “selecting a unidirectional transmission technique, from a
plurality of unidirectional transmission techniques, based on the location of
the proximally situated WEC” (hereinafter “the selection step”), recited in
claim 1. Final Action 7—8. The Examiner found “[wjith respect to selecting
a communication mechanism based on the location of the proximally
situated WEC, in an analogous art, Schafer teaches selecting a network for
communication from the transponder, based on location and signal strength
due to that location.” Id. The Examiner found this teaching of Schafer, in
2 Schafer, US 6,300,875 Bl; iss. Oct. 9, 2001.
3 Nanda et al., US 2008/0026797 Al; pub. Jan. 31, 2008.
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combination with Nanda’s teaching of “wireless communication via
directional and omni-direction antennas,” taught or suggested the claimed
selection step. Id. at 7—9. The Examiner reiterated in the Answer that a
combination of Schafer and Nanda were relied on for the selection step in
the obviousness rejection. Answer 19—21.
In their arguments before us, Appellants did not address the cited
teachings or suggestions of Schafer in their arguments relating to the
selection step. App. Br. 15—17; Reply Br. 4—6. Because Appellants’
arguments, with respect to this limitation, discussed only on the Nanda
reference and not the combination as applied by the Examiner and the
findings relating to the combination, we found that Appellants did not
persuade us of Examiner error in the rejection of claim 1 and the other
claims argued on the same basis. Decision 6—7.
Appellants argue that “the Appellants[’] Brief, the Examiner’s
Answer, and the Reply Brief all focused on whether Nanda disclosed the
claimed [selection step].” Req. Reh’g 5—6. Appellants further argue that
“[the Decision] . . . overlooked the fact that S[c]hafer had already been
discussed during prosecution, and had ultimately been deemed deficient by
the Examiner.” Req. Reh’g 6.
We do not agree that we overlooked deficiencies in Schafer, as
Appellants assert. Req. Reh’g 6. As detailed above, in the Final Action, the
teachings of Schafer remained an integral part of the Examiner’s rejection of
the claims, specifically with respect to the selection step. Additionally,
Appellants’ assertions regarding whether and how Schafer “was previously
found to be deficient” (Req. Reh’g 6) were not presented in the Appeal
Brief, and thus they were not overlooked or misapprehended. 37 CFR
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§ 41.37(c)(l)(iv) requires that an appeal brief contain the arguments with
respect to each ground of rejection and that “any arguments or authorities
not included in the appeal brief will be refused consideration by the Board
for the purposes of the . . . appeal.” Our role is to review the arguments
and/or evidence submitted to us, based on the issues identified by
Appellants. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(Precedential) (available at
https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/prec/fd090
06013.pdf).
Motivation to Combine
Appellants argue that we overlooked an argument that the Examiner
did not provide a sufficient motivation to combine prior art references
(Shao,4 Nystrom,5 Schafer, and Nanda) in the rejection, e.g., of claim 1.
Req. Reh’g 6—7. We noted in our opinion, while addressing arguments
made by Appellants that “[t]he Examiner has provided reasoning for the
combination of the prior art applied . . . but Appellants do not address this
reasoning.” Decision 4. Appellants argue that “The Board’s statement,
however, is incorrect as Appellants did directly address the Examiner's
purposed reasoning for combining Shao, Nystrom, S[c]hafer, and Nanda.”
Req. Reh’g at 7 (citing App. Br. 19). We agree that Appellants stated that
the Examiner’s presented motivation of designing an energy efficient system
was not a motivation that existed “in Shao, Nanda, Nystrom, or S[c]hafer,
nor did such a motivation exist within the industry at the time of the
4 Shao et al. (US 2008/0175199 Al; pub. July 24, 2008)
5 Nystrom et al. (US 2008/0224825 Al; pub. Sept. 18, 2008)
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invention” (App. Br. 19) and that a discussion of this statement was
overlooked in our decision.
We specifically addressed the propriety of the combination used in the
Examiner’s obviousness rejection. Decision 4—5. We note that energy
efficiency is specifically discussed in Nystrom (e.g. at || 3, 14, 15, 32,
Abstract) and Schafer (at 1:37-40, 55—60.) To the extent that we overlooked
this statement within Appellants’ argument with respect to the motivation to
combine, we grant a rehearing but are not persuaded by that argument of
error in the Examiner’s combination.
Alleged New Ground of Rejection
In the Reply Brief, Appellants argued that the Examiner had issued a
new ground of rejection for claim 25, and the new ground was improper.
Reply 8. In our decision we noted that any arguments regarding propriety of
the purported inclusion of or designation of a new ground of rejection is not
an appealable matter before us. Decision 7—8. Appellants argue that we had
misapprehended the situation, because in addition to maintaining that the
Examiner had improperly made a new ground of rejection, Appellants
provided specific arguments addressing the alleged new ground of rejection.
Req. Reh’g 8—9. However, our discussion regarding petitionable matters
was a response to Appellants’ contentions regarding of the propriety of any
new ground of rejection. Reply Br. 7 (“D. The Examiner’s New Ground of
Rejection is Improper.”) We did not overlook or misapprehend Appellants’
other arguments as a result of our discussion of whether the propriety of a
purported new ground was properly before us.
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Rejection of Claims 25—27
The Examiner first cited Rofougaran6 in the Answer. Answer 10—11,
23—24. In our decision, we credited the Examiner’s express statement
(Answer 23) that Rofougaran was cited “as evidence to support the Official
Notice.” Decision 8. Appellants argue that “even if Rofougaran was only
cited as evidence to support the Official Notice” its use would be improper.
Req. Reh’g 9-10.
In the Reply Brief, Appellants made arguments regarding the use of
Rofougaran in a new ground of rejection, challenging the use of Rofougaran
given its publication date. Reply Br. 8—9. Appellants herein argue that
“because Rofougaran did not publish under after the filing date of the
present application, Appellants’ work described in Rofougaran was not
published until after the present application was filed. Therefore,
Rofougaran cannot be used to show that the features of independent claim[]
25 were ‘common knowledge’ before the present application was filed.”
Req. Reh’g 9—10.
Appellants argue that they had requested documentary evidence to
support to the Official Notice and cite to prior responses in the office. Req.
Reh’g 10. It appears that the Examiner found that Appellants to have
adequately traversed the official notice and that Rofougaran was provided as
documentary evidence relating to the facts officially noticed. Answer 23—
24; see also MPEP 2144.03(C) (“If. . . applicant’s traverse is not adequate,
the examiner should clearly indicate in the next Office action .... the
examiner should include an explanation as to why it was inadequate.”)
6 Rofougaran et al., US 2011/0021138 Al; pub. Jan. 27, 2011.
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While in some circumstances, a reference cited to show a universal
fact need not be available as prior art before the filing date of the
application, we do not find that this such a circumstance. See MPEP 2124.
The Rofougaran reference is not provided to show properties of a material or
a scientific truism or the level of ordinary skill in the art. See In re Roller
613 F.2d 819, 824 (CCPA 1980); In re Wilson 311 F.2d 266, 268-9 (CCPA
1962); Ex parte Erlich, 22 USPQ 1463 (BPAI 1992). Thus, the filing date
of Rofougaran excludes it from being proper documentary evidence to
support the rejection.
Upon review, we agree that Rofougaran is not adequate documentary
evidence to support the Examiner’s official notice. Therefore, we herein
reverse the Examiner’s rejection of claims 25, 26, and 27.
DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing, and reverse the Examiner’s rejection of claims 25, 26, and 27.
We have maintain our Decision to affirm the Examiner’s rejections of claims
1-21 and 28-30.
Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
REQUEST FOR REHEARING GRANTED
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