Ex Parte Gillick

Patent Trial and Appeal BoardApr 29, 2016

13092868 (P.T.A.B. Apr. 29, 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. 13/092,868 04/22/2011 John Gillick 7535 7590 John B. Gillick, Jr. 8 Franklin Ave Claymont, DE 19703 09/22/2017 EXAMINER STORK, KYLE R ART UNIT PAPER NUMBER 2144 MAIL DATE DELIVERY MODE 09/22/2017 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 JOHN GILLICK Appeal 2014-002478 Application 13/092,868 Technology Center 2100 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and KARA L. SZPONDOWSKI, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed June 29, 2016, Appellant requests a reconsideration under 37 C.F.R. § 41.52 from the Decision on Request for Rehearing (“Decision” or “Req. Reh’g Dec.”) of the Patent Trial and Appeal Board (“Board”), dated April 29, 2016. In the Decision, we reiterated our affirmance of the Examiner’s rejections of claims 1, 4—6, 9—11, and 14—21. Req. Reh’g Dec. 2—6. Appeal 2014-002478 Application 13/092,868 ANALYSIS In the present Request for Rehearing (“Req. Reh’g”), Appellant presents two principal arguments. Req. Reh’g 2—13. We address Appellant’s arguments seriatim. Claims 16, 18, and 20 First, Appellant alleges the Board misapprehends Appellant’s argument that McNally teaches away from edits by non-collaborators. Req. Reh’g 2. Appellant reiterates McNally’s statement that “[ojther than the owner and the collaborators, no one else can change the public facing version of the text,” teaches away from its possible combination with Ben-Schachar. Id. at 3^4 (citing McNally 140). In particular, Appellant alleges the Board erred in its justification for the proposed combination that McNally is not relied upon to teach the disputed limitation. Id. at 4. According to Appellant, irrespective of Ben-Schachar’s disclosure of allowing editing in a collaborative environment and a non-collaborative environment, McNally’s cited disclosure teaches away from the proposed combination. Id. This argument is not persuasive. Appellant misconstrues the finding we made in the Decision. In particular, we did not hold that “the ‘teaching away’ for a particular feature must be located in the reference being relied upon for that particular feature,” as incorrectly characterized by Appellant. Id. Instead, in explaining the structure of the proposed combination, we simply noted that the Examiner relied upon Ben-Schachar to teach the permissive editing in both a collaborative environment and a non- collaborative environment. Req. Reh’g Dec. 4. 2 Appeal 2014-002478 Application 13/092,868 Further, Appellant alleges the Board erred in finding that “McNally’s restriction of allowing owners and collaborators to apply edits does not teach away from suggesting edits by non-collaborators.” Req. Reh’g 4 (citing Req. Reh’g Dec. 4). According to Appellant, McNally’s disclosure that “other users can be authorized to edit the knol” simply means users can be authorized to collaborate (i.e., edit the knol = changing the public-facing version of the text). Id. at 4—5 (citing McNally 40, 44). Therefore, Appellant submits because McNally discloses authorized users can suggest edits, which can only be applied by owners and collaborators to change the public facing version, McNally’s disclosure of restricting the application of edits to owners and collaborators teaches away from non-collaborators automatically integrating an edit into the text. Id. at 5. Appellant’s argument is not persuasive. A reference teaches away from a claimed invention if it “criticize[s], discredits], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). While we agree with Appellant that McNally discloses restricting editing the public-facing version of the knol to owners and collaborators, we do not agree with Appellant that such disclosure teaches away from “others” editing. Id. at 5. Instead, McNally discloses that the owner can authorize “others” to edit (i.e., collaborate) or simply to suggest the edit (non-collaborate). McNally Tflf 40, 44. According to McNally, only owners and collaborators can edit the public-facing version of the knol, but “others can provide suggested edits to the current public-facing version of the knol.” Id. 144. We disagree with Appellants that this “clearly and unambiguously teaches away from ‘others’ causing an automatic (e.g., without manual review/intervention) change to 3 Appeal 2014-002478 Application 13/092,868 the public facing version.” Req. Reh’g 5. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (“A reference does not teach away,... if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.”); Fulton, 391 F.3d at 1201 (“mere disclosure of alternative designs does not teach away”). Therefore, although McNally’s disclosure precludes non-collaborators from editing the public-facing version of the knol, McNally does not preclude the system from being used in a non-collaborative environment because users designated as non-collaborators (“others”) are allowed to suggest edits, which are subsequently applied by collaborators. Accordingly, we maintain our finding that McNally’s disclosure does not teach away from non-collaborators suggesting edits as required by claim 16. Appellants further argue “Ben-Schachar may describe collaborative group editing and non-collaborative single user document production, but does not describe providing tools to each user of a plurality of users who are not collaborators and automatically integrating an edit into the text.” Req. Reh’g. 7. Appellant’s argument is not persuasive because it does not address the Examiner’s findings, namely, the combination of McNally, Hood, and Ben-Schachar. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). Therefore, we find no error in our affirmance of the Examiner’s proposed combination of Hood and McNally with Ben-Schachar to reject claim 16. 4 Appeal 2014-002478 Application 13/092,868 Claims 1, 4—6, 9-11, 14, and 15 Second, Appellant reiterates the argument that the Board erred in finding Hood’s disclosure of a change conditioned on a plurality of votes being greater than a threshold does not teach automatically integrating an edit into the text conditioned on a plurality of similar suggested edits being greater than a threshold. Req. Reh’g 7—9. This argument is not persuasive as it was fully addressed in our prior communication to Appellant. Req. Reh’g Dec. 2-4. We remind Appellant that a request for rehearing is not an opportunity to reiterate arguments presented previously in earlier pleadings that were fully addressed in an earlier Decision. 37 C.F.R. § 41.52. CONCLUSION THEREFORE, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision, but have DENIED it with respect to making any changes 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). DENIED 5