Ex Parte GrossDownload PDFPatent Trial and Appeal BoardMar 31, 201411369796 (P.T.A.B. Mar. 31, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN N. GROSS ____________ Appeal 2010-010147 Application 11/369,796 Technology Center 3600 ____________ 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 Appeal 2010-010147 Application 11/369,796 2 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. Appeal 2010-010147 Application 11/369,796 3 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: Appeal 2010-010147 Application 11/369,796 4 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) llw Copy with citationCopy as parenthetical citation