Ex Parte Cudak et al

Patent Trial and Appeal BoardOct 24, 2016

13905089 (P.T.A.B. Oct. 24, 2016)

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. 13/905,089 05/29/2013 Gary D. Cudak RPS920130011US1 (161) 2912 50594 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33487 01/09/2017 EXAMINER DICKERSON, CHAD S ART UNIT PAPER NUMBER 2672 NOTIFICATION DATE DELIVERY MODE 01/09/2017 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@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY D. CUDAK, LYDIA M. DO, CHRISTOPHER J. HARDEE, and ADAM ROBERTS Appeal 2015-008311 Application 13/905,089 Technology Center 2600 Before STEPHEN C. SIU, NATHAN A. ENGELS, and SCOTT E. BAIN, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON REHEARING Appellants submit a Request for Rehearing (“Req. Reh’g.” or “Request”) under 37 C.F.R. § 41.52 from the Opinion of the Board of Patent Trial and Appeal Board, dated Oct. 26, 2016 (“Decision”). Appeal 2015-008311 Application 13/905,089 In the Decision, we affirmed the Examiner’s rejection of claims 1, 8 and 14 as unpatentable over Wolff1 and Parry.2 Decision 4. Appellants previously argued that Wolff fails to disclose or suggest that “a facsimile requirement of the same document includes end user supplied data,” that “nothing in the barcode of Wolff relates to any requirement that any field be completed and there is no determination in Wolff that any field be completed prior to faxing,” and that “there is no teaching that the data in the barcode [of Wolff] requires the completion of a field.” App. Br. 5, 7, 8. In other words, Appellants previously argued that Wolff fails to disclose or suggest a “facsimile requirement” that a location in a document includes end user supplied data, as recited in claim 1, for example. The Examiner previously determined that Parry teaches the “facsimile requirement,” as recited in claim 1. Ans. 23—24. We agreed with the Examiner. Decision 2—A. In response to the Examiner’s finding that Parry discloses the claimed “facsimile requirement,” Appellants argued that “it is Wolff and not Parry that the Examiner relies upon for the disputed claim limitation[s].” Decision 3^4 (citing App. Br. 5—8, Reply Br. 3—7). Appellants did not provide arguments asserting or demonstrating sufficiently that Parry, in fact, fails to disclose or suggest the “disputed claim limitations.” 1 US 7,289,685 Bl, issued Oct. 30, 2007 (“Wolff’). 2 US 2005/0231746 Al, published Oct. 20, 2005 (“Parry”). 2 Appeal 2015-008311 Application 13/905,089 We determined that, contrary to Appellants’ assertion, the Examiner relies on Parry to disclose or suggest the “disputed claim limitations” and that “Appellants ... do not dispute the Examiner’s explicit findings that Parry teaches the disputed claim features.” Decision 4 (citing App. Br. 5-8, Reply Br. 3-7, Ans. 23-24). In the Request for Rehearing, Appellants now present a new argument not previously presented on appeal that “the plain claim language of claim 1 requires that an error message is generated ... in response to determining that a particular location of a fax LACKS any end user supplied data.” Req. Reh’g. 3. Hence, Appellants newly argue that Parry fails to disclose or suggest generating an error message in response to the “lack” of data. Under 37 C.F.R. § 41.52(a)(1), a request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” In the present case, Appellants provide a new argument pertaining to an issue not previously disputed in Appellants’ Appeal Brief. Indeed, as discussed above, Appellants do not point out any specific arguments previously presented in Appellants’ Appeal Brief pertaining to the Parry reference at all. Under 37 C.F.R. § 41.52(a)(1), “Arguments not raised and Evidence not previously relied upon ... are not permitted in the request for rehearing.” Appellants’ newly raised arguments pertaining to Parry in the present Request were not previously raised or previously relied upon. 3 Appeal 2015-008311 Application 13/905,089 Therefore, Appellants’ newly raised arguments in the present Request are not permitted for rehearing under 37 C.F.R. § 41.52. Appellants’ request for rehearing is denied. DENIED 4