Ex Parte Behzad et alDownload PDFPatent Trial and Appeal BoardDec 22, 201712877941 (P.T.A.B. Dec. 22, 2017) 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. 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). Appeal 2015-007773 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. 2 Appeal 2015-007773 Application 12/877,941 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 3 Appeal 2015-007773 Application 12/877,941 § 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) 4 Appeal 2015-007773 Application 12/877,941 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. 5 Appeal 2015-007773 Application 12/877,941 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. 6 Appeal 2015-007773 Application 12/877,941 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 7 Copy with citationCopy as parenthetical citation