Ex Parte Creamer et al

Patent Trial and Appeal BoardDec 19, 2012

10730330 (P.T.A.B. Dec. 19, 2012)

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. 10/730,330 12/08/2003 Thomas E. Creamer BOC920030109US1 (013) 2374 46322 7590 12/19/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER ADDY, THJUAN KNOWLIN ART UNIT PAPER NUMBER 2652 MAIL DATE DELIVERY MODE 12/19/2012 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 THOMAS E. CREAMER, NEIL KATZ, VICTOR S. MOORE, and SCOTT WINTERS ____________ Appeal 2010-004795 Application 10/730,330 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and RAMA G. ELLURU, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing (hereinafter “Reqest”) of the August 14, 2012, Decision on Appeal (hereinafter “Decision”), wherein we affirmed the rejection of claims 1, 4, 5, 8-12, 15, 16, and 17 under 35 U.S.C. § 102(b) as being anticipated by Petrunka, of claims 4, 8, 9, 11, 15, and 16 under 35 U.S.C. § 102(e) as being anticipated by Reynolds, and of claims 2, 3, 6, 7, Appeal 2010-004795 Application 10/730,330 2 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Petrunka, in view of Novack. We have reconsidered the Decision in light of Appellants’ arguments but, for the reasons given below, we are not persuaded any points were misapprehended or overlooked by the Board in our Decision therein. Appellants argue that our decision ignored Appellants’ claim limitation “at least one line information database (LIDB) disposed in said PSTN,” as stated at page 9 of the Appeal Brief, and “did not address whether or not the LIBD is within the PSTN or disposed outside the PSTN” (Reqest 3-4). Appellants further argue that our decision also “misapprehended or overlooked certain arguments presented by Appellants in the Appeal Brief” (Reqest 5). These arguments are unpersuasive because Appellants’ contentions at page 9 of their Appeal Brief merely repeated how, according to the Examiner, “Petrunka teaches a line information database (LIDB) disposed in the PSTN and configured to store individual searching keys, and further that each of the individual searching keys has an association with a corresponding subscriber to the PSTN” (see App. Br. 9). Specifically, Appellants repeated the Examiner’s findings with respect to language preferences in Petrunka (id.) and continued contending the Examiner’s construction of the claim term “searching keys” as “language preference” at page 10 of their Appeal Brief, rather than whether or not the LIDB is within the PSTN. First, Appellants’ statements at page 9 of their Appeal Brief, which merely point out what a claim recites, will not be considered an argument for separate patentability of the claim as such statements are mere conclusory statements that are unsupported by factual evidence and, thus, are entitled to Appeal 2010-004795 Application 10/730,330 3 little probative value. That is, with respect to the limitation “whether or not the LIBD is within the PSTN or disposed outside the PSTN,” Appelalnts’ remarks on page 9 of the Appeal Brief failed to present an argument to rebut the Examiner’s findings. Thus, we do not agree that we misapplied the relevant law and misapprehended the Appellants’ argument in our Decision with respect to “whether or not the LIBD is within the PSTN or disposed outside the PSTN.” Second, Appellants’ arguments in the Request (Request 4-5) related to whether or not the LIDB is within the PSTN constitute new arguments which were not presented in the Appeal Brief. It is inappropriate for Appellants to discuss for the first time in a Request for Rehearing matters that could have been raised in the Appeal Brief. “The failure to raise all issues and arguments diligently, in a timely fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision). CONCLUSION Based on the foregoing, we have granted Appellants’ request to the extent that we have reconsidered our decision, but we deny Appellants’ request to make any changes therein. DECISION The request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2010-004795 Application 10/730,330 4 REHEARING DENIED msc