Ex Parte Gilman et al

Patent Trial and Appeal BoardJan 31, 2017

13329295 (P.T.A.B. Jan. 31, 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. 13/329,295 12/18/2011 Brian L. Gilman RPS920110042US1 (140) 1461 50594 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33487 EXAMINER AGUILERA, TODD ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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 BRIAN L. GILMAN and WILLIAM G. PAGAN Appeal 2015-008236 Application 13/329,295 Technology Center 2100 Before MARC S. HOFF, JENNIFER L. McKEOWN, and LINZY T. McCARTNEY, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellants request rehearing of our Decision dated November 2, 2016 (“Decision”), where we affirmed the Examiner’s decision to reject claims 1—12. Request for Rehearing, dated June 6, 2014 (“Request”). We have reconsidered the Decision in light of Appellants’ comments in the Request and, for the reasons noted below, we deny the request to modify our Decision. Appellants contend that the Board failed to consider Appellants’ argument that the Examiner mischaracterizes paragraph 184 of Mahaffey Appeal 2015-008236 Application 13/329,295 and that Mahaffey teaches away from the claimed invention. Request 4—6. Appellants also allege the Board erred by finding Appellants waived the argument that Mahaffey teaches away from the claimed invention. Id. We find these arguments unpersuasive. First, we disagree that the Examiner mischaracterizes Mahaffey. As Appellants point out, paragraph 184 describes that “[a]s can be seen, the cited portion of Mahaffey teaches issuing an alert to an end user [i.e. taking an action] if an application is associated with different ratings that compare beyond a threshold to a policy [in response to a set of ratings meeting a pre stored threshold].” Request 4; see also Final Act. 4—5 (noting that Mahaffey describes that “[f]or example, when a user installs an application, the software ‘retrieves an assessment for the application and compares the application’s privacy, security and battery ratings with the policy thresholds and alerts the user if the application exceeds the configured policy. ’ (Mahaffey at par. [0184]).”). Both the Examiner and the Board explain that the rejection then relies on Burke as teaching prompting the computer to apply the update. Final Act. 4, 8; Ans. 5; Decision 4; see also Mahaffey 1 184 (noting that “[i]nstead of blocking installation of an application that is undesirable, a user may want to simply be warned of the undesirability” and, as such, the installation may at times be installed). As noted in the Decision, Appellants’ argument fails to consider the combination of Mahaffey with Burke. Decision. 4—5; see also Final Act. 4—5; Ans. 6. Second, we disagree that the Board incorrectly finds Appellants’ teaches away argument, which was presented for the first time in the Reply Brief, was waived. Although Appellants allege that the argument was presented in response to newly presented arguments by the Examiner, 2 Appeal 2015-008236 Application 13/329,295 Appellants fail to identify any such arguments. See Request 5—6. To the contrary, the Examiner relies on precisely the same findings and arguments as presented in the Final Action. Compare Final Act. 3—6, 7—9, with Ans. 5— 7. We also note that Appellants’ arguments in the Reply Brief do not merely identify an alleged mischaracterization in the Examiner’s Answer but adds the new argument that Mahaffey teaches away from the claimed invention. See Reply Br. 8—9. Moreover, despite Appellants’ untimely presentation of the argument, the Decision, nevertheless, considers and rejects the newly presented argument. See Decision 6—7. We have considered the arguments raised by Appellants in the Request, but the arguments are not persuasive to find that the original Decision was in error. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting claims 1—12. REHEARING DENIED 3