Ex Parte Gross

Patent Trial and Appeal Board

Mar 31, 2014

11369796 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN N. GROSS
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Appeal 2010-010147
Application 11/369,796
Technology Center 3600
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Before LINDA E. HORNER, Vice Chief Administrative Patent Judge, and
MURRIEL E. CRAWFORD, ANTON W. FETTING,
JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent
Judges.

FISCHETTI, Administrative Patent Judge.

SECOND DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2010-010147. On
January 28, 2013, the Patent Trial and Appeal Board (“Board”) entered its
Decision on Appeal No. 2010-010147 (“Decision”). On March 27, 2013,
Appellant filed a REQUEST FOR REHEARING UNDER 37 C.F.R.
§ 41.52 (“Request”). On May 1, 2013, the Board entered a Decision
denying Appellant’s Request for Rehearing (“First Decision on Request for
Rehearing”). On June 17, 2013, Appellant filed an appeal from the United
States Patent and Trademark Office in Application No. 11/369,796 to the
United States Court of Appeals for the Federal Circuit. On motion, the
parties jointly moved to remand this appeal for further proceedings before
the Board. We have jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision. 37 C.F.R.
§ 41.52.
We find no error with the analysis presented in our First Decision on
Request for Rehearing dated May 1, 2013. Specifically, we find that the
“best bets” embodiments disclosed in Hunt A (col. 12, line 63 through col.
13, line 14; col. 16, ll. 61-63) properly correspond to “wherein a common
playable media items is taken from a limited subset of playable media items
determined to be popular by the computing system among subscribers,” as
recited in independent claims 14 and 18.
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But, upon further review of the record, we grant Appellant’s Request
to the extent we denominate our analysis in the First Decision on Request for
Rehearing as a new ground of rejection under our authority pursuant to
37 C.F.R. § 41.50(b), and return the application to the Examiner for further
consideration. For the sake of clarity in the Record, we confirm by this
Second Decision on Request for Rehearing that the Board, in its analysis in
the First Decision on Request for Rehearing, has entered a new ground of
rejection of claims 14 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings (US 7,024,381 B1; iss. Apr. 4, 2006), Pauliks
(US 6,981,003 B2; iss. Dec. 27, 2005) and Hunt A (US 7,403,910; iss. Jul.
22, 2008). By this Second Decision on Request for Rehearing, we reverse
the Examiner’s rejection of claims 14 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Hastings, Pauliks, and Hunt B (US 2005/0125307
A1; pub. Jun. 9, 2005).

DECISION
Our Decision dated January 28, 2013 on Appeal No. 2010-010147 is
modified to be consistent with our analysis set forth in the Decision on
Request for Rehearing dated May 1, 2013, and to include a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) (2008).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
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must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

GRANTED-IN-PART; 37 C.F.R. § 41.50(b)

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