Ex Parte Darago et al

Patent Trial and Appeal Board

Dec 9, 2016

14164178 (P.T.A.B. Dec. 9, 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.
14/164,178 01/25/2014 Vincent S. Darago 5045.2.1G 2587
23484 7590
John Ogilvie
2148 E. 11270 S.
Sandy, UT 84092
12/13/2016 EXAMINER
HOANG, HIEU T
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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):
j ohn @ Ogil vieLawFirm .com
j ohnw ogilvie @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT S. DARAGO and
CHRISTOPHER JENKINS
Appeal 2015-005867
Application 14/164,178
Technology Center 2400
Before ADAM J. PYONIN, AMBER L. HAGY, and
SHARON FENICK, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
In papers filed November 21, 2016, Appellants request rehearing
(hereinafter “Request”) under 37 C.F.R. § 41.52 from our Decision on
Appeal mailed September 29, 2016 (hereinafter “Decision”).1 In the
Decision, we affirmed the Examiner’s rejection of claims 38—53 and 58—61.
We have reconsidered our decision in light of Appellants’ Request for
Rehearing, but we decline to change the decision.
1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.” 37 C.F.R.
§ 41.52(a)(1).
Appeal 2015-005867
Application 14/164,178
We find Appellants’ arguments unpersuasive for the reasons given in
our prior Decision. We highlight the following for emphasis.
Appellants contend:
1. Appellants pointed out in their Appeal Brief that “Official
Notice may only be taken of facts” and the Examiner, at pages 10, 11, and
12 of the Answer, took Official Notice of “legal conclusions (which are not
facts).” (Request 1.) The Board must correct the Examiner’s “clear and
significant misunderstanding,” and “[djoing anything less at this point will
make the Board a public apologist for a clear legal error by the Examiner.”
(Request 2.)
2. In holding that the second, third, and fourth arguments of the
Appeal Brief fail because they rely on the premise that the prior art
references “cannot be physically combined,” the Board overlooked the
decision in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314 (Fed. Cir. 2009). (Request 2.)
3. The Board failed to consider Appellants’ evidence that
combining the Ananda and Lawlor references would “decrease accuracy by
several orders of magnitude.” (Request 3—5.)
4. The Board failed to consider Appellants’ evidence that
combining the Ananda and Lawlor references would add “complexity” and
“drastically complicate[] the system.” (Request 5—6.)
5. The Board failed to consider Appellants’ evidence that
combining the Ananda and Lawlor references “would break Ananda’s
technology” and create an inoperative result. (Request 6.)
None of Appellants’ contentions show any matter that was
misapprehended or overlooked by the Board in rendering the Decision.
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Application 14/164,178
With regard to Appellants’ first contention, we disagree that
Appellants have raised an “oversight” on the part of the Examiner with
regard to taking Official Notice that requires correction. Most
fundamentally, Appellants’ stated basis for rehearing does not pertain to
issues preserved on appeal. The “Official Notices” referenced in
Appellants’ closing paragraph on appeal are those stated by the Examiner at
“pages 10, 11, and 12 of the Final Office Action” (Request 1 (citing App.
Br. 8))—which do not pertain to any claims Appellants argued substantively
on appeal. Rather, the Examiner’s rejections stated at pages 10—12 of the
Final Office Action are of claims 48, 50, and 52. (Final Act. 10-12.) As we
noted in the Decision, however, Appellants presented substantive arguments
on appeal only with regard to the Examiner’s rejection of claim 38, and
expressly agreed that “the claims are grouped together” for purposes of
appeal. (Decision 4, n.4; see also App. Br. 4.) And, while the Examiner
relied upon a different Official Notice in the rejection of claim 38,
Appellants did not raise any error by the Examiner with regard to the
Examiner’s reliance on that Official Notice. (Decision 4, n.5; see also Final
Act. 7 (“Official notice is taken that distribution of courseware content over
a network was known in the art (for example, see Siefert, US 2001/0055749,
[0010], distributing lessons to client computers”).)
Thus, Appellants did not present arguments on appeal regarding the
Examiner’s rejection of any claims other than claim 38, or on the taking of
Official Notice in the rejection of claim 38. Any arguments not presented on
appeal are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, Appellants’ closing remarks in their Appeal Brief disparaging the
Examiner’s taking of “Official Notice” in connection with the rejection of
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Appeal 2015-005867
Application 14/164,178
claims not substantively argued on appeal (or identified by Appellants) fail
to constitute a separate issue of patentability. See In re Lovin, 652 F.3d
1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board has reasonably
interpreted Rule 41.37 to require applicants to articulate more substantive
arguments if they wish for individual claims to be treated separately.”).
By noting that Appellants have waived a substantive challenge to the
Examiner’s taking of Official Notice in connection with the rejection of
claims 48, 50, and 52, we do not mean to suggest that, had such a challenge
been preserved, Appellants would have been successful in demonstrating
Examiner error in the rejection of those claims. By choosing not to address
these claims substantively on appeal, Appellants have not placed into
context the propriety of the Examiner’s findings or conclusions regarding
those claims—including the Examiner’s taking of Official Notice—nor have
they provided the Examiner with an opportunity in an Answer to respond to
such contentions. We cannot opine on rehearing, in a vacuum, as to whether
the Examiner’s taking of Official Notice in connection with claims not
argued on appeal was reversible error.
With regard to Appellants’ second contention, we disagree that we
overlooked relevant precedent. As we noted in our Decision, Appellants’
arguments that combining Lawlor with Ananda would result in an inferior
and/or unworkable system are premised on the notion that the Examiner’s
combination requires bodily incorporation of Lawlor with Ananda, and that
such combination is unworkable. (Decision 6—7.) As we further noted in
our Decision, however, whether parts of one reference may be bodily
incorporated into another is not the proper standard for evaluating
obviousness. (Id. (citing, e.g., In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
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Appeal 2015-005867
Application 14/164,178
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . .”)). See also In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”). The Federal
Circuit’s decision in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314 (Fed. Cir. 2009), is not to the contrary, nor do Appellants
explain their reasoning behind suggesting that it is.
With regard to Appellants’ third, fourth, and fifth contentions,
Appellants’ arguments are a reiteration of the arguments referenced in
Appellants’ Appeal Brief2 as to alleged errors in the Examiner’s fact finding.
(Request 4—6.) Appellants argue that adding Lawlor’s clock synchronization
to Ananda would make the system more complex and would decrease
accuracy, and could even “break” Ananda’s system. (Id.) As we noted in
our Decision, we found these arguments unpersuasive because, inter alia,
they rely on the flawed premise that the systems taught in the cited
references would have to be bodily incorporated together, without the
exercise of independent judgment or creativity by the ordinary skilled
artisan. (Decision 6—8.) In reiterating those arguments in their Request,
2 As we noted in our Decision, the substance of Appellants’ arguments on
these grounds was contained primarily in a document that was incorporated
by reference, improperly, into Appellants’ Appeal Brief. (Decision 4.)
Appellants perpetuate this error in their Request by again relying on material
that is not in Appellants’ Appeal Brief. (E.g., Request 3 (citing “8/22/2014
submission”).)
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Application 14/164,178
Appellants have not persuaded us that we have overlooked or
misapprehended any matter in rendering our Decision.
CONCLUSION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our Decision, but we deny
Appellants’ request with respect to making any change thereto.
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).
DENIED
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