Ex Parte Crowther

Patent Trial and Appeal BoardMar 6, 2017

12571836 (P.T.A.B. Mar. 6, 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. 12/571,836 10/01/2009 David Crowther GINS0135PUS1 2739 22045 7590 03/08/2017 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER BRYANT, REBECCA CAROLE ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 03/08/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID CROWTHER Appeal 2015-007838 Application 12/571,836 Technology Center 2800 Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 This is in response to a Request for Rehearing (“Req. Reh’g”), dated February 23, 2017, of our Decisions, mailed January 18, 2017 (“Decision”), wherein we affirmed the Examiner’s § 103(a) rejection of all appealed claims. 1 Appellant filed a Request for Oral Hearing on February 24, 2017. The request was not timely (see 37 C.F.R. § 41.47(b)), and the appeal, including the Request for Rehearing, was decided on the briefs (see 37 C.F.R. § 41.47(c)). Appeal 2015-007838 Application 12/571,836 We have reconsidered our Decision, in light of Appellant’s comments in the Request for Rehearing, and we find no error in the disposition of the § 103(a) rejections. We have reviewed the arguments set forth by Appellant in the Request. However, we remain of the opinion that the subject matter of the claims is properly rejected and unpatentable under 35 U.S.C. § 103(a). Appellant argues three issues in the Request: (1) intervening case authority requires reasoning that is absent from the Final Action; (2) the Board misapprehended the modem law of obviousness in condoning hindsight; and (3) the Examiner effectively issued a new ground of rejection in the Answer. Req. Reh’g 3, 5—7. We address each issue in turn. Issue 1 First, Appellant complains that the words “motivation,” “reason,” and their cognates do not appear in the Final Action, and argues that “[t]he Examiner stated no motivation or reason in the final rejection to combine or modify the Reeves and Mufti references; only that these references could be combined.” Id. at 2, 4 (emphasis in original). Appellant cites PersonalWeb Technologies, LLC v. Apple, Inc., 2017 WL 587132 (Fed. Cir. Feb. 14, 2017), as intervening case authority that “emphasized ‘obviousness concerns whether a skill artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.Req. Reh’g 2. However, Appellant’s quoted language comes from a 2015 case from the Federal Circuit: Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Thus, Appellant’s argument is not based upon a recent relevant decision of either the Board or a federal court, and is not proper. See 37 C.F.R. § 41.52(a)(2). 2 Appeal 2015-007838 Application 12/571,836 Moreover, in Personal Web, the Federal Circuit reiterated the well- recognized requirement that a determination of obviousness requires an explanation of the motivation or reasoning one of ordinary skill in the art at the time of the invention would use to combine prior art references to reach the claimed invention with a reasonable expectation of success. PersonalWeb, 2017 WL 587132, at *6. The Court also noted that “[t]he amount of explanation needed to meet the governing legal standards . . . necessarily depends on context. A brief explanation may do all that is needed if, for example, the technology is simple and familiar and the prior art is clear in its language and easily understood.” Id. Even though the Examiner did not use the specific words “reason” or “motivation” in the Final Action, as stated in our Decision, adequate rationale was provided for one of ordinary skill in the art at the time of the invention to combine the references. See Decision 5—'7. The Examiner’s analysis “need not seek out precise teachings directed to the challenged claim’s specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 401, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). For the reasons above, we find Appellant’s contention that intervening case authority has altered the requirements for showing obviousness to be incorrect. We also find that the Examiner adequately demonstrated that one of ordinary skill in the art at the time of the invention would have been motivated to combine the references to reach the claimed invention. We are not persuaded of error in our Decision. 3 Appeal 2015-007838 Application 12/571,836 Issue 2 Appellant contends that, because the Decision cites In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971), “the Board condones the Examiner’s use of hindsight,” and “misapprehended the modem law of obviousness.” Req. Reh’g 5—6. Appellant argues that the legal constmct of a person having ordinary skill in the art at the time of the invention that was followed when In re McLaughlin issued has changed, and “[t]he tenets of In re McLaughlin are dead.” Id. at 6. Appellant then concludes that the Board followed defunct law in finding that the Examiner did not resort to hindsight reconstmction in rejecting the claims. Id. (“The Board misapprehended the modem law of obviousness.”). Appellant, however, conflates the knowledge attributed to the inventor with the knowledge attributed to one of ordinary skill in the art at the time of the invention. Appellant cites to two cases, neither of them In re McLaughlin, as holding that the inventor was presumed to have full knowledge of the prior art in his field of endeavor. Id. at 5 (citing In re Winslow, 365 F.2d 1017, 1020 (CCPA 1966) and In reAntle, 444 F.2d 1158 [sic], 1171—72 (CCPA 1971)). Appellant is correct that current case law holds “the presumption that the inventor has knowledge of all material prior art to be dead.” Id. at 6 (citing Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed, Cir. 1984) (emphasis added)). According to Kimberly-Clark, it is the hypothetical person of ordinary skill in the art at the time of the invention who is presumed to have knowledge of the prior art, including what would be obvious from it. Kimberly-Clark, 745 F.2d at 4 Appeal 2015-007838 Application 12/571,836 1453—54. The holding of Kimberly-Clark does not support Appellant’s position. Appellant’s argument does not persuade us In re McLaughlin is no longer good law. We do not view the case as condoning, now or ever, the use of an applicant’s disclosure to reconstruct an invention and render it obvious. Appellant has not persuaded us of error in our Decision. Issue 3 Appellant argues that the Examiner’s identification, for the first time in the Answer, of “processor within camera 21 and Figure 11, processor 59a and 59b” as the processor of the claims is effectively a new ground of rejection, warranting reopening of prosecution. Ans. 5; Req. Reh’g 10. Appellant demonstrates that, prior to the Answer, the Examiner consistently identified the processor of the claims as “processor 21” of Reeves. See Req. Reh’g at 7. Appellant cites to cases that hold when the Board relies on a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or to request a rehearing. See id. at 11. However, the Board did not rely on a new ground of rejection, so such argument is not persuasive here. Appellant cites to MPEP § 2144.09 for support that, if an examiner’s answer relies on a different structure than the one on which the examiner previously relied, the rejection should be designated as a new ground. Req. Reh’g 11. The problem here is that Appellant had notice—via the Answer— of the Examiner’s position on the structure in Reeves considered to be the processor of the claims, but Appellant made no attempt to raise or address 5 Appeal 2015-007838 Application 12/571,836 the issue in the Reply Brief. Thus, Appellant has waived this argument. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir. 2008) for the proposition that the Board may treat arguments appellant failed to make as waived). Accordingly, no persuasive merit is present in Appellant’s argument. We decline to modify our decision to affirm the Examiner’s § 103(a) rejection of the appealed claims. Based on the foregoing, Appellant’s Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejection therein. This Decision on the Request for Rehearing incorporates our Decision, mailed January 18, 2017, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). 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)(v). DENIED 6