Ex Parte Gordon

Patent Trial and Appeal BoardJun 23, 2017

12978647 (P.T.A.B. Jun. 23, 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. 12/978,647 12/27/2010 Raz Gordon 1561 7590 06/26/2017 Collage Analytics LLC 1652 48th Street Brooklyn, NY 11204 EXAMINER OHBA, MELLISSA M ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 06/26/2017 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 RAZ GORDON __________ Appeal 2016-000075 Application 12/978,647 Technology Center 2100 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant filed a "Rehearing Request" under 37 C.F.R. § 41.521 of the Decision on Appeal.2 In the Decision on Appeal, the Board affirmed but denominated as new grounds 1. the rejection of claims 1, 4, 7, 10, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Das and Ohkubo; and, 2. the rejection of claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Das, Ohkubo, and Patterson. 1 The Appellant inadvertently cites Rule 41.50(b). See Req. 1. 2 This "Decision on Request for Rehearing" references the Appellant's Rehearing Request (“Req.,” filed Mar. 28, 2017) and the Decision on Appeal (“Dec.,” mailed Jan. 26, 2017). Appeal 2016-000075 Application 12/978,647 2 The Appellant states that "[o]n September 21, 2015, during the pendency of this appeal, Appellant submitted an amendment to the claims, pursuant to 37 C.F.R. § 41.33(b), cancelling claims 7–9." Req. 2. The record supports the Appellant's statement. The record shows that such an amendment ("AMENDMENT PURSUANT TO 37 C.F.R. § 41.33(B)," filed Sep. 21, 2015; hereinafter "Amendment") was indeed filed concomitantly with the filing of the Reply Brief. In accordance with 37 C.F.R. § 41.33(b), "[a]n amendment filed on or after the date an appeal brief is filed may be admitted ... [t]o cancel claims provided cancellation of claims does not affect the scope of any other pending claim in the application ... ." The Appellant attests to the canceling of claims 7–9 as "not affect[ing] the scope of any other claim pending in this appeal" (Amendment 1) and we agree. Accordingly, the amendment should have been admitted and we do so here. As a result we withdraw all discussion and analysis that focuses on claims 7–9 from the Decision and modify the Decision so that the Board affirms but denominates as new grounds only: 1. the rejection of claims 1, 4, 10, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Das and Ohkubo; and, 2. the rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Das, Ohkubo, and Patterson. As the Appellant points out, "the Board notes that it would reject claims 1 and 4 for the same reasons it rejected claim 7." Req. 2. See Dec. 7 ("We will affirm the rejection of claim 1 for the same reasons.") Accordingly, although we modify the Decision to withdraw discussion that focuses on independent claim 7, discussion relevant to the other independent claims 1 and 4 is maintained. Appeal 2016-000075 Application 12/978,647 3 In that regard, the Decision stated: We will affirm the rejection of claim 1 for the same reasons. Claim 1 differs from claim 7 in that the document associated with a first date is associated with a second date associated with a corresponding content element identical or similar to a content element in the document. In light of the fact that claim 1 places no limitation on the claim terms "first date" and "second date" and that the Specification provides no definition constraining the claim phrases "first date" and "second date," the claim phrases "first date" and "second date" reasonably broadly cover the same day. Given that construction, our reasoning above with respect to Das alone leading one of ordinary skill to the subject matter claimed in claim 7 applies here as to the subject matter of claim 1. Claim 4 parallels claim 1 and therefore we will affirm the rejection of claim 4 for the reasons discussed. Dec. 7. The Appellant disagrees and requests reconsideration. The Appellant argues that the terms "first date" and ''second date" necessarily distinguish between two members, and/or are repeated instances of the an element or limitation. The terms "first date" and "second date" must necessarily be construed as two distinguishable dates. If the "first date" and "second date" are the same date, then the two elements identified as "first" and "second" would essentially be one and the same element. Appellant respectfully submits that a claim construction that results in two separately identified elements in a claim being construed as one and the same element is not a reasonable construction of the claim. Req. 3–4. The difficulty with the Appellant's argument is that the record does not support construing the terms "first date" and ''second date" as narrowly limited to represent different days. As we stated in the Decision, "the Specification provides no definition constraining the claim phrases "first date" and "second date." Dec. 7. Absent that, we found "the claim phrases Appeal 2016-000075 Application 12/978,647 4 "first date" and "second date" reasonably broadly cover the same day." Dec. 7. The Appellant finds such a broad construction of "first date" and "second date" to be unreasonable and that the only reasonable construction is to narrowly construe said claim phrases "first date" and "second date" as indicative of different days. Rather than relying on the record, the Appellant appeals to logic - "[i]f the "first date" and "second date" are the same date, then the two elements identified as "first" and "second" would essentially be one and the same element." Req. 2. That is true. But the Appellant does not explain why the claimed subject matter precludes the "first date" and "second date" from being the same day. The method of claim 1 calls for a document "associated with a first date," said document having a content element that is "identical or similar in accordance with a similarity threshold to a corresponding content element maintained in the computer system." The method then calls for "identifying in the computer system a second date associated with the corresponding content element." Then the method "associat[es] in the computer system the document with the second date associated with the corresponding content element." We do not see and the Appellant does not fully explain why, in "associating in the computer system the document ['associated with a first date'] with the second date associated with the corresponding content element," the first and second dates cannot be the same. The claim would cover associating a document with a corresponding content element on any given day. The Appellant cites MPEP 2111.03. Req. 2. In so citing, the Appellant appears to argue furthermore that the claim phrases "first date" and "second date" inherently or necessarily mean different days. But we do not see that Appeal 2016-000075 Application 12/978,647 5 stated there. The discussion therein of a claim to “a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades,” which the court in Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367 (Fed. Cir. 2005) held to encompass razors with more than only three blades, does not support that view. A claim that would recite first, second, and third blades would necessarily call for three blades, not one, but each blade could be the same. The Appellant also cites 3M Innovative Prop. V. Avery Dennison, 350 F.3d 1365, 1371 (Fed. Cir. 2004) as stating that "[t]he use of the terms 'first' and 'second' is a common patent-law convention to distinguish between repeated instances of an element or limitation." This decision, too, does not compel construing the claim phrases "first date" and "second date" as inherently or necessarily indicative of different days. The issue there was whether the term “multiple embossed patterns” included a limitation that embossed patterns be created sequentially. The court found that "[i]n the context of claim 1, the use of the terms “first … pattern” and “second … pattern” is equivalent to a reference to “pattern A” and “pattern B,” and should not in and of itself impose a serial or temporal limitation onto claim 1." Id. The issue here is whether the informational content carried by the “first date” and “second date” elements of the claim necessarily must be the same. While two "dates" are required, the record does not support requiring them to be different values. Cf. Linear Technology Corp. v. International Trade Com'n, 566 F.3d 1049, 1055 (Fed. Cir. 2009): We agree with the Commission's construction of “second circuit” and “third circuit,” defining the terms broadly to not Appeal 2016-000075 Application 12/978,647 6 require entirely separate and distinct circuits. Indeed, there is nothing in the claim language or specification that supports narrowly construing the terms to require a specific structural requirement or entirely distinct “second” and “third” circuits. Rather, the “second” and “third” circuits must only perform their stated functions. We have considered the Appellant's arguments as to the construction of the claim phrases "first date" and "second date" but do not find them persuasive. CONCLUSION We have carefully considered the arguments that the Appellants have set forth in the Request but, for the foregoing reasons, we do not find them persuasive as to error in the Board’s decision affirming but denominating as new grounds: 1. the rejection of claims 1, 4, 10, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Das and Ohkubo; and, 2. the rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Das, Ohkubo, and Patterson. The Request is however granted to the extent that all discussion and analysis focusing on cancelled claims 7–9 in the Decision is hereby withdrawn. GRANTED-IN-PART