Ex Parte Cohen et al

Patent Trial and Appeal Board

Apr 1, 2016

12807908 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/807,908 09/15/2010 Alexander J. Cohen
80118 7590 04/01/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
SEl-0591-US 1881
EXAMINER
BELCHER, HERMAN A
ART UNIT PAPER NUMBER
2448
MAILDATE DELIVERY MODE
04/01/2016 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 ALEXANDER J. COHEN, EDWARD K.Y. JUNG,
ROYCE A. LEVIEN, ROBERT W. LORD, and
WILLIAM HENRY MANGIONE-SMITH
Appeal2013-008012
Application 12/807,908
Technology Center 2400
Before LORA M. GREEN, ALLEN R. MacDONALD, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-008012
Application 12/807,908
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 57---61, 63-88, 90, and 118-125. (App. Br. 2). We have jurisdiction
under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 57, 75, and 76 under appeal read as follows
(emphasis added):
57. A network subsystem comprising:
circuitry for signaling a first appnet, the first appnet
including a first application relating with a first core and with a
second core;
circuitry for aggregating information in response to data
received after signaling the first appnet; and
circuitry for transmitting at least a portion of the
information in response to the data received after signaling the
first appnet.
75. The network subsystem of claim 57 in which the circuitry
for transmitting at least a portion of the information in response to the
data received after signaling the first appnet comprises:
circuitry for associating a dissemination policy at least
with the first application and with a recipient identifier.
76. The network subsystem of claim 57 in which the circuitry
for transmitting at least a portion of the information in response to the
data received after signaling the first appnet comprises:
circuitry for associating a dissemination policy with at
least the first application; and
circuitry for transmitting at least the portion of the
information according to the dissemination policy.
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Rejections on Appeal
The Examiner provisionally rejected claims 57----61, 63-88, 90, 118,
and 119 on the ground of nonstatutory obviousness-type double patenting as
not being patentably distinct from claims 57----61, 63-88, 90, 118, and 120 of
co-pending U.S. Application No. 11/524,040 in view of U.S. Patent
Application Publication 2004/0139108 Al. 1 Final Act. 6-8.
The Examiner rejected claims 57----61, 63----67, 69-78, 81-88, 90, and
118-24 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Tang et al. (US 2004/0139108 Al; publ. July 15, 2004) and
Vaught et al. (US 2005/0010660 Al; publ. Jan. 13, 2005).2 Final Act. 9-33.
The Examiner rejected claims 68, 79, 80, and 125 under 35 U.S.C.
§ 103(a) as being unpatentable over Tang and Vaught in various
combinations with other references. 3 Final Act. 33-37.
1 1A..ppellants do not appeal this rejection. 1A..pp. Br. 11 n.2. Therefore, \Ve
affirm proforma. Except for our ultimate decision, this rejection is not
discussed further herein.
2 Separate patentability is argued for claims 57, 75, 76, 81, and 122.
Separate patentability is not argued for claims 58----61, 63----67, 69-74, 77, 78,
82-88, 90, 118-121, 123, and 124. As to claims 90 and 118, Appellants
merely repeat for these claims (App. Br. 47-77) the arguments directed to
claim 57. While repetition of an argument for patentability of a first claim
as an argument for a second claim might outwardly appear to be a separate
argument for patentability of the second claim, such a repeated argument is
not in fact an argument for "separate patentability." Except for our ultimate
decision, this rejection of claims 58----61, 63----67, 69-74, 77, 78, 82-88, 90,
118-121, 123, and 124 is not discussed further herein.
3 Separate patentability is not argued for these rejections of claims 68, 79,
80, and 125. Except for our ultimate decision, these rejections of claims 68,
79, 80, and 125 are not discussed further herein.
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Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 57
under 35 U.S.C. § 103(a) because:
Appellant first notes that that there is no broadest
reasonable claim interpretation of record that would explain
how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification). Appellant therefore
traverses the rejection of Independent Claim 57 as being
unreasonable.
Moreover, Appellant notes that because these express
recitations of Independent Claim 57 do not appear in the pin-
point cited evidence, Claim 57 is allowable over the art for at
least these reasons. That is, no specific technical material has
been cited in relation to such claim recitations, as is required
under 3 7 C.F .R. § 1.104( c )(2). Appellant therefore traverses the
rejection on the basis that there is no cited technical material for
at least these express claim recitations.
In view of the foregoing, Appellant points out that
although Independent Claim 57 has been quoted in the present
rejection, Appellant has demonstrated that one or more express
claim recitations do not appear in the pinpoint-cited evidence.
Because there is no pinpoint-cited technical material for such
express claim recitations of Independent Claim 57, Appellant
respectfully asks that the Board reverse the USPTO's rejections.
App. Br. 15, footnote omitted, emphasis added.
2. Appellants also contend that the Examiner erred in rejecting claim
57 under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that the portions of Tang and/or
Vaught cited by the USPTO do not show or suggest the express
language of Appellant's Independent Claim 57 as further
discussed below.
App. Br. 16, emphasis added.
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Appellant respectfully submits that Tang at best describes a
multi-server environment including services. As one of skill in
the art will appreciate, the environment described by Tang does
not equate to "a first appnet, the first appnet including a first
application relating with a first core and with a second core" as
recited in Appellant's Independent Claim 57.
App. Br. 20, Appellants' emphasis omitted, Panel emphasis added.
Appellant has shown by direct quotations that Independent
Claim 57 and the cited portions of Tang are very different on
their faces. See supra (quotation of Claim 57 and quotation of
Tang). Insofar as that Appellant has shown that "at first sight; on
the first appearance; on the face of it; so far as can be judged
from the first disclosure" the specific USPTO-cited technical
material is different from Claim 57, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Independent Claim 57 over the pinpoint-cited
portions of Tang.
App. Br. 20, Appellants' emphasis omitted, Panel emphasis added.
3. Appellants also contend that the Examiner erred in rejecting claim
57 under 35 U.S.C. § 103(a) because:
Appellant has shown by direct quotations that Independent
Claim 57 and the cited portions of Vaught are very different on
their faces. See supra (quotation of Claim 57 and quotation of
Vaught). Insofar as that Appellant has shown that "at first sight;
on the first appearance; on the face of it; so far as can be judged
from the first disclosure" the specific USPTO-cited technical
material is different from Claim 57, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Independent Claim 57 over the pinpoint-cited
portions of Vaught.
App. Br. 24, Appellants' emphasis omitted, Panel emphasis added.
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4. Appellants contend that the Examiner erred in rejecting claim 57
under 35 U.S.C. § 103(a) because:
Appellant respectfully points out that MPEP § 2143.01,
Suggestion or Motivation to Modify the References, citing In re
Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959), expressly
states that "[i]f the proposed modification or combination of the
prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are
not sufficient to render the claims primafacie obvious."
App. Br. 24.
[I] f one were in fact to combine the single network resource
teaching of Vaught with the teachings of the Tang disclosure,
Tang would no longer operate by providing an "aggregate view
across all servers." Therefore, Appellant respectfully asserts that
the Examiner suggested modification of Tang with the teachings
of Vaught changes the principle of operation of Tang. "If
proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is
no suggestion or motivation to make the proposed
modification." MPEP § 2143.01 (V) (citing In re Gordon, 733
F.2d 900, 221USPQ1125 (Fed. Cir. 1984)).
Accordingly, Appellant asserts that, as a matter of law,
there is no suggestion or motivation to combine the disclosure
of Tang with that of Vaught for at least the above stated reasons.
Appellant asserts that under the MPEP standards as set forth
above, the Examiner has not established that art of record renders
Independent Claim 57 obvious in view of Tang and Vaught.
App. Br. 26, emphasis added.
5. Appellants contend that the Examiner erred in rejecting claim 75
under 35 U.S.C. § 103(a) because:
Appellant first notes that that there is no broadest
reasonable claim interpretation of record that would explain
how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification). Appellant therefore
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traverses the rejection of Dependent Claim 75 as being
unreasonable.
Moreover, Appellant notes that because these express
recitations of Dependent Claim 75 do not appear in the pin-point
cited evidence, Claim 7 5 is allowable over the art for at least
these reasons. That is, no specific technical material has been
cited in relation to such claim recitations, as is required under
37 C.F.R. §1.104(c)(2). Appellant therefore traverses the
rejection on the basis that there is no cited technical material for
at least these express claim recitations.
In view of the foregoing, Appellant points out that
although Dependent Claim 7 5 has been quoted in the present
rejection, Appellant has demonstrated that one or more express
claim recitations do not appear in the pinpoint-cited evidence.
Because there is no pinpoint-cited technical material for such
express claim recitations of Dependent Claim 7 5, Appellant
respectfully asks that the Board reverse the USPTO's rejections.
App. Br. 28-29, footnote omitted, emphasis added.
6. Appellants also contend that the Examiner erred in rejecting claim
75 under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that the portions of Tang cited by
the USPTO do not show or suggest the express language of
Appellant's Dependent Claim 75 as further discussed below.
App. Br. 29, emphasis added.
Appellant has shown by direct quotations that Dependent Claim
7 5 and the cited portions of Tang are very different on their
faces. See supra (quotation of Claim 75 and quotation of Tang).
Insofar as that Appellant has shown that "at first sight; on the
first appearance; on the face of it; so far as can be judged from
the first disclosure" the specific USPTO-cited technical
material is different from Claim 75, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Dependent Claim 7 5 over the pinpoint-cited
portions of Tang.
App. Br. 31, Appellants' emphasis omitted, Panel emphasis added.
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7. Appellants contend that the Examiner erred in rejecting claim 7 6
under 35 U.S.C. § 103(a) because:
Appellant first notes that that there is no broadest
reasonable claim interpretation of record that would explain
how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification). Appellant therefore
traverses the rejection of Dependent Claim 76 as being
unreasonable.
Moreover, Appellant notes that because these express
recitations of Dependent Claim 76 do not appear in the pin-point
cited evidence, Claim 7 6 is allowable over the art for at least
these reasons. That is, no specific technical material has been
cited in relation to such claim recitations, as is required under
37 C.F.R. §1.104(c)(2). Appellant therefore traverses the
rejection on the basis that there is no cited technical material for
at least these express claim recitations.
In view of the foregoing, Appellant points out that
although Dependent Claim 7 6 has been quoted in the present
rejection, Appellant has demonstrated that one or more express
claim recitations do not appear in the pinpoint-cited evidence.
Because there is no pinpoint-cited technical material for such
express claim recitations of Dependent Claim 7 6, Appellant
respectfully asks that the Board reverse the USPTO's rejections.
App. Br. 33-34, footnote omitted, emphasis added.
8. Appellants also contend that the Examiner erred in rejecting claim
76 under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that the portions of Tang cited by
the USPTO do not show or suggest the express language of
Appellant's Dependent Claim 76 as further discussed below.
App. Br. 34, emphasis added.
Appellant has shown by direct quotations that Dependent Claim
7 5 and the cited portions of Vaught are very different on their
faces. See supra (quotation of Claim 76 and quotation of
Vaught). Insofar as that Appellant has shown that "at first sight;
on the first appearance; on the face of it; so far as can be judged
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from the first disclosure" the specific USPTO-cited technical
material is different from Claim 76, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Dependent Claim 7 6 over the pinpoint-cited
portions of Tang.
App. Br. 36, Appellants' emphasis omitted, Panel emphasis added.
9. Appellants contend that the Examiner erred in rejecting claim 81
under 35 U.S.C. § 103(a) because:
Appellant first notes that that there is no broadest
reasonable claim interpretation of record that would explain
how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification). Appellant therefore
traverses the rejection of Dependent Claim 81 as being
unreasonable.
Moreover, Appellant notes that because these express
recitations of Dependent Claim 81 do not appear in the pin-point
cited evidence, Claim 81 is allowable over the art for at least
these reasons. That is, no specific technical material has been
cited in relation to such claim recitations, as is required under
37 C.F.R. §1.104(c)(2). Appellant therefore traverses the
rejection on the basis that there is no cited technical material for
at least these express claim recitations.
In view of the foregoing, Appellant points out that
although Dependent Claim 81 has been quoted in the present
rejection, Appellant has demonstrated that one or more express
claim recitations do not appear in the pinpoint-cited evidence.
Because there is no pinpoint-cited technical material for such
express claim recitations of Dependent Claim 81, Appellant
respectfully asks that the Board reverse the USPTO's rejections.
App. Br. 38-39, footnote omitted, emphasis added.
10. Appellants also contend that the Examiner erred in rejecting claim
81under35 U.S.C. § 103(a) because:
Appellant respectfully submits that the portions of Tang cited by
the USPTO do not show or suggest the express language of
Appellant's Dependent Claim 81 as further discussed below.
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App. Br. 39, emphasis added.
Appellant has shown by direct quotations that Dependent Claim
81 and the cited portions of Vaught are very different on their
faces. See supra (quotation of Claim 81 and quotation of
Vaught). Insofar as that Appellant has shown that "at first sight;
on the first appearance; on the face of it; so far as can be judged
from the first disclosure" the specific USPTO-cited technical
material is different from Claim 81, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Dependent Claim 81 over the pinpoint-cited
portions of Tang.
App. Br. 41, Appellants' emphasis omitted, Panel emphasis added.
11. Appellants contend that the Examiner erred in rejecting claim 122
under 35 U.S.C. § 103(a) because:
Appellant first notes that that there is no broadest
reasonable claim interpretation of record that would explain
how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification). Appellant therefore
traverses the rejection of Dependent Claim 122 as being
unreasonable.
Moreover, Appellant notes that because these express
recitations of Dependent Claim 122 do not appear in the pin-
point cited evidence, Claim 122 is allowable over the art for at
least these reasons. That is, no specific technical material has
been cited in relation to such claim recitations, as is required
under 3 7 C.F .R. § 1.104( c )(2). Appellant therefore traverses the
rejection on the basis that there is no cited technical material for
at least these express claim recitations.
In view of the foregoing, Appellant points out that
although Dependent Claim 122 has been quoted in the present
rejection, Appellant has demonstrated that one or more express
claim recitations do not appear in the pinpoint-cited evidence.
Because there is no pinpoint-cited technical material for such
express claim recitations of Dependent Claim 122, Appellant
respectfully asks that the Board reverse the USPTO's rejections.
App. Br. 43, footnote omitted, emphasis added.
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12. Appellants also contend that the Examiner erred in rejecting claim
122 under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that the portions of Tang cited by
the USPTO do not show or suggest the express language of
Appellant's Dependent Claim 122 as further discussed below.
App. Br. 44, emphasis added.
Appellant has shown by direct quotations that Dependent Claim
122 and the cited portions of Tang are very different on their
faces. See supra (quotation of Claim 122 and quotation of Tang).
Insofar as that Appellant has shown that "at first sight; on the
first appearance; on the face of it; so far as can be judged from
the first disclosure" the specific USPTO-cited technical
material is different from Claim 122, Appellant respectfully
submits that Appellant has made out a facially valid case of
patentability of Dependent Claim 122 over the pinpoint-cited
portions of Tang.
App. Br. 46, Appellants' emphasis omitted, Panel emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claims 57, 75, 76, 81, and 122 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Tang
and Vaught?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief) that the Examiner has erred.
As to above contentions 1-5, 7, and 9-12, we disagree with
Appellants' conclusions. Except as noted below, we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
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the Examiner's Answer in response to Appellants' Appeal Brief We
concur with the conclusions reached by the Examiner. We highlight
additional points infra.
As to above contentions 6 and 8, we agree with Appellants'
conclusions for the reasons discussed infra.
As to Appellants' above contention 1, we disagree. First, Appellants'
are mistaken in arguing that the rejection is "unreasonable" merely because
"there is no broadest reasonable claim interpretation of record that would
explain how such mapping might be reached (e.g., such as by examples
drawn from Appellant's specification)." Previously, Jung, one of the
co-inventors here, was informed by our reviewing court that on-the-record
claim construction was not required.
There has never been a requirement for an examiner to
make an on-the-record claim construction of every term in every
rejected claim and to explain every possible difference between
the prior art and the claimed invention in order to make out a
prima facie rejection. This court declines to create such a
burdensome and unnecessary requirement.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Further, contrary to
Appellants' argument that there must be a mapping by Examiner to
"examples drawn from Appellant's [sic] specification," Appellants explicitly
state "[ t ]he illustrative embodiments described in the detailed description ...
are not meant to be limiting." Spec. 8:24--25.
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Second, Appellants generally object that the Examiner has not
complied with the requirements of 37 C.F .R. § 1.104( c )(2). This rule goes
to the form of the rejection. As with an Examiner's objection as to
Appellants' failure to comply with a rule, this matter relates to a petitionable
issue and not an appealable issue. Thus, the relief sought by the Appellants
properly should have been sought by a petition to the Commissioner under
37 C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, while we
will consider particular alleged errors in the merits of the rejection to the
extent Appellants have placed them before us, we will not further consider
this petitionable issue.
Third, Appellants are doubly mistaken in arguing that there is
requirement that express claim recitations appear in the pinpoint-cited
evidence. Appellants overlook that there is no ipsissimis verbis test within
35 U.S.C. § 103. Appellants' assertion that claim limitations are not
expressly recited in a reference does not evidence lack of prima facie
obviousness, but, rather, "begs the substantive question of whether there are
facial differences to be bridged." See In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011 ). A reference does not have to satisfy an ipsissimis verb is test to
disclose a claimed element, therefore Appellants' demand for such an
exacting match is not persuasive of error. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Also, Appellants are mistaken in their attempt to
rewrite the rejection as being based solely on the pinpoint-cited technical
material. The rejection was based on the cited references with the
Examiner's analysis setting forth pinpoint-cites to place Appellants on notice
of the Examiner's rejection. While Appellants are not required to review the
cited references to construct a rejection where the Examiner has not
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provided notice as to particular limitations, we know of no case law that
permits Appellants to close their eyes to portions of the cited references that
underpin and reinforce the provided notice just because those portions are
outside the Examiner's pinpoint-citations. To the contrary, the test for
obviousness is what the combined teachings of the references as a whole
would have suggested to those of ordinary skill in the art, not merely what
the pinpoint-citations disclosed. In re Keller, 642 F.2d 413, 425 (CCPA
1981). See also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
As to Appellants' above contentions 5, 7, 9, and 11 (directed to claims
75, 76, 81, and 122 respectively), these contentions merely repeat the
arguments of contention 1 (as to claim 57) and we disagree for the same
reasons set forth directly above.
As to Appellants' above contentions 2, 3, 10, and 12, we disagree with
Appellants' argument that Appellants have shown that direct quotations of
Independent Claim 57 and the cited portions of Tang and Vaught are very
different on their faces. In addition to the Examiner's reasoning, as
discussed above, there is no ipsissimis verbis test within 35 U.S.C. § 103,
and Appellants are mistaken in their attempt to rewrite the rejection as being
based solely on the pinpoint-cited technical material. Further as to
contention 12, we note that Appellants' Specification is silent as to any
particular support for the claim limitation "the first application relating to a
core when it is at least more closely associated with that core than with other
cores." Contrary to Appellants' summary of claim 122 (App. Br. 10),
Appellants' Specification at page 9, line 11, does not provide such support.
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As to Appellants' above contention 4, we disagree. 4 Appellants'
argument, "modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification," is an argument that the
reference teaches away from the proposed modification. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) ("In effect, French teaches away from the
board's proposed modification."). Appellants' argument fails for two
reasons. First, it does not acknowledge the impact of the Court's explicit
rejection in KSR of the rigid requirement that the art suggest a modification.
KSR Int'! Inc. v. Teleflex Inc., 550 U.S. 398, 415 (2007) ("We begin by
rejecting the rigid approach of the Court of Appeals.").
Second, beyond advocating a rigid requirement that an artisan cannot
use Vaught as a teaching of anything but aggregating data gathered from a
single resource (and thus not as a teaching of transmitting at least a portion
of any aggregated data irrespective of the data's source), Appellants do not
explain what in Vaught meets the requirements of a teaching away from the
invention claimed. "A reference may be said to teach away when a person
of ordinary skill, upon reading the reference ... would be led in a direction
divergent from the path that was taken by the applicant." In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (internal quotations and citation omitted).
A reference does not teach away if it merely expresses a general preference
for an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391F.3d1195, 1201
4 We also disagree with Examiner's response (Ans. 40-41) to Appellants'
contention 4.
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(Fed. Cir. 2004). We do not find teaching away in the situation before this
Board.
Further, we find that being more or less effective is not a teaching
away. "A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use." In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994);
see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (no teaching
away when Appellants failed "to cite any reference suggesting that the
claimed invention would be unlikely to work using electrical circuitry ...
only that it may be inferior for certain purposes."). While Vaught may
disclose some advantages of aggregating data gathered from a single
resource, it does not discredit or discourage the use of other forms of
aggregating data. Therefore, Appellants' conclusory assertion that Vaught
teaches away from the asserted combination is not persuasive of Examiner
error. Such unsupported attorney argument is entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
As to Appellants' above contentions 6 and 8, we agree. Appellants'
arguments are essentially statements that an artisan reviewing these
Examiner's rejections would find them to be wrong on their face. We have
reviewed the rejections which equate Tang's "personalized listing" with
limitations of Appellants' claims 7 5 and 7 6 and agree with Appellants. We
conclude the cited portions of Tang, those additional portions of Tang that
underpin and reinforce the cited portions, and the Examiner's analysis (Final
Act. 17-18 and Ans. 42--46) do not provide sufficient articulated reasoning
as to why an artisan would find obvious "circuitry for associating a
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dissemination policy at least with the first application and with a recipient
identifier," "circuitry for associating a dissemination policy with at least the
first application," and "circuitry for transmitting at least the portion of the
information according to the dissemination policy."
CONCLUSIONS
(1) The Examiner did not err in provisionally rejecting claims 57---61,
63-88, 90, 118, and 119 on the ground of nonstatutory obviousness-type
double patenting as not being patentably distinct.
(2) The Examiner did not err in rejecting claims 57---61, 63-74, 77-88,
90, and 118-25 as being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claims 75 and 76 as being unpatentable under 35 U.S.C. § 103(a).
(4) Claims 57---61, 63-88, 90, and 118-125 are not patentable.
DECISION
The Examiner's provisional rejection of claims 57---61, 63-88, 90,
118, and 119 on the ground of nonstatutory obviousness-type double
patenting is affirmed.
The Examiner's rejections of claims 57---61, 63-74, 77-88, 90, and
118-125 as being unpatentable under 35 U.S.C. § 103(a) are affirmed.
The Examiner's rejection of claims 75 and 76 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
Because we have sustained at least one rejection of each of the claims
on appeal, the Examiner's decision rejecting claims 57-61, 63-88, 90, and
118-125 is affirmed. See 37 C.F.R. § 41.50(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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