Ex Parte Cohen et al

Patent Trial and Appeal Board

Jun 23, 2017

13531995 (P.T.A.B. Jun. 23, 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.
13/531,995 06/25/2012 CHAIM Y. COHEN IL920120037USl_8150-0288 5418
73109 7590 06/27/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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 CHAIM Y. COHEN, ELD AD PALACHI, and TAKASHI
SAKAIRI
Appeal 2016-005466
Application 13/531,995
Technology Center 2100
Before THU A. DANG, KIMBERLY McGRAW, and JOHN D. HAMANN,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”) on May 30, 2017 for reconsideration of our
affirmance of the Examiner’s rejections of claims 5—12 in a Decision mailed
March 28, 2017 (hereinafter “Decision”). The Decision affirmed: The
Examiner’s rejection of claims 5—12 under the judicially created doctrine of
nonstatutory obviousness-type double patenting (OTDP) over claims 1—4 of
U.S. Patent Application No. 13/919,323; the rejection of claims 9-12 under
35 U.S.C. § 101; and the rejection of claims 5—12 under 35 U.S.C. § 103(a)
Appeal 2016-005466
Application 13/531,995
as unpatentable over the teachings of James et al. (US 5,701,439; issued
Dec. 23, 1997), and Clune (US 2006/0064292 Al; published Mar. 23, 2006).
We have reconsidered our Decision regarding the claims in light of
Appellants’ comments in the Request (Req. Reh’g 2—13). We grant the
Rehearing Request to the extent that we consider the Appellants’ arguments
infra, but DENY the request to modify our Decision. We incorporate our
earlier Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).
II. ISSUES
The issues we address in this Request is whether Appellants have
persuasively identified that the Board misapplied the relevant law or
misapprehended Appellants’ arguments set forth in the Appeal Brief in
finding no error with the following:
1. The Examiner’s provisional OTDP rejection of claims 5—12.
2. The Examiner’s finding that claim 9’s “computer-readable
storage medium” is not within one of the four statutory categories of a
“process, machine, manufacture, or composition of matter” under 35 U.S.C.
§101 (emphasis added); and
3. The Examiner’s rejection of claims 5—12 over the combination
of James and Clune, by finding the combination teaches or suggests a model
exporter configured to “export from the first modeling environment to a
second modeling environment, a description ... of the association between
the discrete system element and the continuous system element” (claim 5,
emphasis added).
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III. ANALYSIS
Obviousness-Type Double Patenting (OTDP)
In the Appeal Brief, Appellants merely contended that “[t]his rejection
is not the subject of the present appeal.” App. Br. 4, n.l. Accordingly, in
our Decision, we pro forma sustained the Examiner’s provisional OTDP
rejection of claims 5—12. Decision 5. As set forth in our Decision and
consistent with the guidance set forth in our reviewing court, our affirmance
of these obviousness-type double patenting rejections is only provisional,
and ‘“might be obviated by future events.’” Id., citing In re Wetterau, 356
F.2d 556, 558 (CCPA 1966).
Contrary to Appellants’ contention in the Request that the issue does
not become ripe “only until the ‘156 Application has issued” (Req. Reh’g 2),
provisional rejections, like all other rejections, are ripe for appeal when an
applicant’s claims have been twice rejected. Wetterau, 356 F.2d at 558. In
addition, although we stated in our Decision, the provisional rejections
“‘might be obviated by future events,”’ Appellants have not presented any
arguments or evidence setting forth how the Examiner’s rejections can be
obviated (id.; Decision 5).
Although Appellants reference Moncla (Exparte Moncla, 95 USPQ2d
1884 (BPAI 2010) (precedential)) in the Request, as Appellants
acknowledge, Moncla addresses a circumstance in which “‘[t]he only
remaining rejection is a provisional non-statutory double patenting
rejection’” (Req. Reh’g 2, emphasis added). Here, the OTDP rejection is not
the only remaining rejection. Further, as set forth in Moncla, the Board has
the flexibility to reach or not reach provisional obviousness type double
patenting rejections. See Moncla, 98 USPQ2d at 1884; see also Ex parte
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Application 13/531,995
Jerg, Appeal 2011-000044, 2012 WL 1375142, at *3 (BPAI Apr. 13,2012)
(informative). Here, consistent with Moncla, we have the flexibility to opt
to reach the provisional rejection.
35 U.S.C.§ 101
Appellants concede in the Request, “the Board addressed an important
argument presented by Appellants” by finding that the paragraph of the
Specification referenced by Appellants ‘“does not support Appellants’
interpretation’” of “‘computer readable storage medium’” (Req. Reh’g 2),
but Appellants contend “[t]his assertion is newly-presented in the
proceedings” which “should be designated a new grounds of rejection” (Req.
Reh’g 3).
However, it is not a new ground of rejection for the Board to respond
to Appellants’ arguments using different language, so long as the “basic
thrust of the rejection” is the same. See In re Kronig, 539 F.2d 1300, 1303
(CCPA 1976). Here, as we noted in our Decision, the Examiner finds the
broadest reasonable interpretation of “‘computer readable storage medium’”
includes “‘non-statutory mediums’” under 35 U.S.C. § 101. (Decision 5,
citing Final Act. 3). In our Decision, we agreed with the Examiner, stating
that we are unpersuaded by Appellants’ contentions, and maintained the
basic thrust of the rejection by agreeing with the interpretation of “‘computer
readable storage medium’ as encompassing transitory signals” {id. 6—7).
Furthermore, claim construction is a matter of law that we review de
novo. See In re Donaldson Co., Inc., 16 F.3d 1189, 1192 (Fed. Cir. 1994).
Thus, assuming arguendo that our claim construction differs from that of the
Examiner, our claim construction supports the Examiner’s conclusion that
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Application 13/531,995
claim 9’s “computer-readable storage medium” is not within one of the four
statutory categories under 35 U.S.C. § 101.
Thus, because the basic thrust of the rejection is the same, i.e., that the
broadest reasonable interpretation of “computer-readable storage medium”
includes “non-statutory mediums” under 35 U.S.C. § 101 (Final Act. 3), our
claim construction supports the Examiner’s interpretation, and our Decision
merely elaborated on the Examiner’s position. Thus, Appellants have been
afforded a fair opportunity to respond to the rejection set forth by the
Examiner. See Kronig, 539 F.2d at 1303.
In the Request, Appellants also state that “Appellants disagree with
the Board’s assertion that ‘[the referenced portion in the Specification] does
not explicitly define what a ‘computer readable storage medium’ is, but
rather defines what a ‘computer readable signal medium’ is not.’” Req.
Reh’g 3. However, Appellants’ disagreement with our Decision is not
persuasive of any points we misapprehended or overlooked in the Decision.
Nevertheless, we maintain that the broadest reasonable interpretation
of “computer readable storage medium” in light of Appellants ’ Specification
does not exclude a propagated signal of electromagnetic or optical form,
respectively. Decision 6. As we pointed out in our Decision, the
Specification indicates the “‘[pjrogram code embodied on a computer
readable medium may be transmitted using any appropriate medium ”’
wherein a “‘computer readable storage medium may be, for example, but not
limited to ”’ various elements. (Decision 6, citing Spec. ^fl[ 13, 15 (emphases
added)). Moreover, we also pointed to paragraph 13, which discloses “‘a
computer readable storage medium may be any tangible medium than can
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Application 13/531,995
contain, or store a program for use by or in connection with an instruction
execution system, apparatus, or device’” (id.).
Although Appellants contend that “Appellants disagree with the
Board’s assertion” (Req. Reh’g 3), Appellants are reminded that the Board
does not “assert,” “admit,” “allege,” “argue,” “concede,” “maintain” or
engage in other like actions because we are not “parties” to any proceeding.
Rather, we are quasi-judicial officials making decisions on a record before
us. Western Electric Co. v. Piezo Technology, Inc. v. Quigg, 860 F.2d 428,
431 (Fed. Cir. 1988); Lindberg v. Brenner, 399 F.2d 990, 990 (D.C. Cir.
1968) (Board of Appeals is a “quasi-judicial” body); Compagnie de St.
Gobain v. Brenner, 386 F.2d 985, 987 (D.C. Cir. 1967); Hirsch v. United
States, 203 USPQ 779 (D. D.C. 1978).
35 U.S.C. § 103(a)
Claims 5—12 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of James and Clune. As set forth in our Decision, the test
for obviousness is what the combined teachings would have suggested to
one of ordinary skill in the art. Decision 8, citing In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, based on the record before
us, we were unpersuaded the Examiner erred in finding the combination of
James and Clune teaches or suggests the contested limitation.
In the Request, Appellants contend that “In re Merck does not apply
to the facts of the present application for reasons discussed within the
Appeal Brief’ wherein these arguments “were either overlooked and/or
misapprehended by the Board” (Req. Reh’g 10). According to Appellants,
“the ‘full scope of the Examiner’s rejection’ relies exclusively upon James
alone to teach the limitations at issue” (Req. Reh’g 9). We disagree.
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As Appellants point out, the Examiner finds that “Clune recite
multiple environments” wherein it would have been obvious “to combine
environments” to arrive at the claimed invention (Req. Reh’g 6—8). That is,
as we pointed out in the Decision, the rejection “rests on a combination of
references” (Decision 8—9). Even Appellants concede, the Examiner rejects
the claims over the combination of James and Clune. Decision 8.
As we pointed out in our Decision, for example, the Examiner finds,
and we agree, that Clune teaches and suggests “‘multiple environments.’”
(Decision 9, citing Ans. 3). Further, we agreed that Clune discloses that the
modeling environment must take into account “‘timing and data
management differences between various modeling environments.’” (Id.).
Thus, we agreed with the Examiner’s conclusion that it would have been
obvious to combine environments to allow for mixed language software
simulations, and thus arrive at the claimed invention. (Decision 9, citing
Final Act. 5 (citing James 1:61—66)). As we noted in the Decision,
Appellants do not dispute these findings or conclusions in the Appeal. Id.
In the Request, even Appellants concede that “Clune teaches and
suggests multiple environments as found by both the Board and the
Examiner” (Req. Reh’g 12). Appellants further concede “the Examiner
[relies] upon Clune to teach a limitation that the Examine [r] previously
relied upon James to teach” (id.). That is, although Appellants contend that
the Examiner “relies exclusively upon James alone to teach the limitations at
issue” (Req. Reh’g 9), in the Request, Appellants concede that the Examiner
also relies on Clune to teach the contested limitation (Request 12).1 In
1 Although Appellants also contend that the Examiner’s finding as to Clune
set forth in the Answer “should have been properly designated a new
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response to such acknowledgement, Appellants merely add “[t]o the extent
that Clune is being relied upon to teach the export of information, the
Examiner’s analysis of James, Clune, or the combination of both does not
address [the contested limitation]” (Request 13).
As set forth in our Decision, based on the record before us, we were
unpersuaded the Examiner erred in finding the combination of James and
Clune teaches or suggests the contested limitation. Decision 8. By merely
setting forth arguments that the combination of references does not disclose
or suggest the contested limitations, Appellants’ Request does not persuade
us of any points we misapprehended or overlooked in the Decision.
On this record, Appellants have not identified that the Board has
misapplied the relevant law or misapprehended Appellants’ arguments.
V. CONCLUSION AND DECISION
We have considered the arguments raised by Appellants in the
Request for Rehearing. Although we have considered our prior Decision in
grounds of rejection” (Req. Reh’g 12), whether an Examiner’s rejection
would or would not properly be regarded as a new ground of rejection is a
petitionable matter, not an appealable matter before us. Appellants had the
opportunity to raise this issue by filing a timely Petition to the Director
under 37 C.F .R. § 1.181, but did not do so.
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light of the Request for Rehearing, we decline to modify our prior Decision
in any respect.
We therefore maintain our affirmance of the Examiner’s rejections of
claims 5—12 under provisional OTDP and U.S.C. § 103(a), and of claims 9—
12 under U.S.C. § 101.
REHEARING DENIED
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