Ex Parte CouttsDownload PDFPatent Trial and Appeal BoardJun 21, 201711836293 (P.T.A.B. Jun. 21, 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. 11/836,293 08/09/2007 Daryl David Coutts MRG0001US 2964 23413 7590 06/23/2017 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street TILLERY, RASHAWN N 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 06/23/2017 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARYL DAVID COUTTS Appeal 2016-000629 Application 11/836,293 Technology Center 2100 Before CAROLYN D. THOMAS, KEVIN C. TROCK, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed, on March 27, 2017, a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereafter “Request”) of our Decision mailed January 27, 2017 (hereafter “Decision”). We have reviewed our Decision in light of Appellant’s Request, but we decline to change the Decision. Appeal 2016-000629 Application 11/836,293 STATEMENT OF THE CASE In the Decision, we affirmed the rejection of claims 20—24 and 27—30 under 35 U.S.C. § 103(a) as unpatentable over the combination of Cheung et al. (US 2004/0061716 Al; published Apr. 1, 2004) (“Cheung”), Awada et al. (US 2007/0101289 Al; published May 3, 2007) (“Awada”), and Kang et al. (US 2002/0152220 Al; published Oct. 17, 2002) (“Kang”). ANALYSIS Appellant argues the Board “incorrect[ly] appli[ed] the law in the rare situation where it is substantiated that the primary reference inventor (Cheung in this analysis) possesses all relevant knowledge.” Request 3. Appellant argues “the Board should instead be applying In re Kleinman[.]” Id. Appellant also cites to Ex parte Lower, Appeal No. 1997-2575 (BPAI). Id. The relevant portion of Kleinman fully states: While it is true that the hypothetical person of ordinary skill in the art against whose knowledge the question of obviousness is weighed is legally presumed to know all the relevant prior art, In re Boyer, 363 F.2d 455, 53 CCPA 1497 (1966), there is no presumption, rebuttable or not, that the holder of a patent had constructive or actual knowledge of that same art when he made the invention. Of course it might very well be a significant point in weighing the content of a patent as a reference if it can be demonstrated that an inventor had actual knowledge of relevant art. However, that situation does not confront us in this case. In re Kleinman, 484 F.2d 1389, 1392 (CCPA 1973) (underlined emphasis added). Kleinman did not hold that an inventor’s actual knowledge of a reference is dispositive to an obviousness analysis. Rather, Appellant’s 2 Appeal 2016-000629 Application 11/836,293 reliance on dicta in Kleinman is inapposite, as the issue presented here was not before the court in Kleinman. Rather, Kleinman merely noted in dicta that the inventor’s actual knowledge of the relevant art “might very well be a significant point in weighing the content of a patent as a reference.” We do not find that is the case here. As noted in our Decision, the test for obviousness concerns the knowledge of one of ordinary skill in the art. Decision 4; see 35 U.S.C. § 103(a) (a patent shall not issue if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 406-7 (2007). Here, the Examiner provided detailed findings regarding the combination of Cheung, Awada, and Kang. Ans. 2^4; Final Act. 2—8. Specifically, the Examiner modified Cheung’s user interface to display the notifications and alerts by time order and with their associated time and date, as taught in Kang. Final Act. 4—5; Ans. 3. As stated in our Decision, based on the record before us, displaying messages or other information based upon date or time ordering was simply a conventional technique. Decision 4. Accordingly, such a replacement would result in no more than the predictable use of prior art: elements according to their established functions. See KSR, 550 U.S. at 417 (In assessing the patentability versus obviousness of claims defining a combination of prior art elements, the question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). 3 Appeal 2016-000629 Application 11/836,293 Appellant also cites to Ex parte Lower. Request 3. First, the Lower decision is a routine Board decision that, while binding authority in that particular case, is not binding here. See Publication of Opinions as Precedential, Informative, Representative, and Routine, PTAB Standard Operating Procedure 2 (Rev. 9) (“SOP 2”) § VI, available at https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated- 9-22-2014.pdf. Second, in Lower, there is no indication that, as here, the knowledge involved a conventional technique. For the foregoing reasons, Appellant has not shown we misapprehended or overlooked any issue of law or fact in our Decision. DECISION For the above reasons, Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but it is denied with respect to our making any modification to the Decision. 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). REHEARING DENIED 4 Copy with citationCopy as parenthetical citation