Ex Parte Hofmann et al

Patent Trial and Appeal BoardJun 27, 2014

11863892 (P.T.A.B. Jun. 27, 2014)

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. 11/863,892 09/28/2007 Markus A. Hofmann 25-2 2503 7590 09/25/2014 Ryan, Mason & Lewis, LLP Suite 205 1300 Post Road Fairfield, CT 06824 EXAMINER SIMS, JING F ART UNIT PAPER NUMBER 2437 MAIL DATE DELIVERY MODE 09/25/2014 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 MARKUS A. HOFMANN and IVICA RIMAC ____________________ Appeal 2012-003202 Application 11/863,892 Technology Center 2400 ____________________ Before CAROLYN D. THOMAS, JASON V. MORGAN and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants1 have filed a Request for Rehearing under 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal mailed April 25, 2014 (“Decision”). In that Decision, we affirmed the Examiner’s final rejection of claims 1-20 under 35 U.S.C. §§ 101, 102(b) and 103(a). We have 1 The Real Party in Interest is Lucent Technologies Inc. Appeal 2012-003202 Application 11/863,892 2 considered the arguments presented by Appellants in the Request for Rehearing (“Req. Reh’g”), but we are not persuaded that any points were misapprehended or overlooked by the Board in issuing the Decision. We have provided herein additional clarification in further support of our decision, but decline to change our decision in view of Appellants’ arguments. ANALYSIS 37 C.F.R. § 41.52 states in relevant part: The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [i.e., based upon a recent relevant decision of either the Board or a Federal Court] through (a)(4) [i.e., responding to a new ground of rejection made pursuant to § 41.50(b)] of this section. 37 C.F.R. § 41.52(a)(1). The standard for rehearing is whether the Board has misapprehended or overlooked any points or arguments raised by Appellants. In this case, Appellants do not request a rehearing of our Decision to affirm the Examiner’s final rejection of: (1) claim 20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter; (2) claims 1-3, 5-8, 10-16, and 18- 20 under 35 U.S.C. § 102(b) as being anticipated by Bergstrand (WO 2002/ 01864 A1); and (3) claims 4, 9, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Bergstrand and Hamid (US Publication No. 2008/0066176 A1). Decision 4-12. Rather, Appellants request a rehearing of our Decision only with respect to the rejection of dependent claims 8 and 16 under 35 Appeal 2012-003202 Application 11/863,892 3 U.S.C. § 102(b) as being anticipated by Bergstrand. Req. Reh’g 1. In particular, Appellants allege the Board inadvertently overlooked Appellants’ separate patentability arguments presented in their Briefs with respect to dependent claims 8 and 16. Req. Reh’g at 2. According to Appellants, Bergstrand does not disclose or suggest the limitation: “wherein said authorization message is provided to said authorizing user on a device where said authorizing user is present,” as recited in dependent claims 8 and 16. Id. at 3. At the outset, we note that the Board has not overlooked any arguments raised by Appellants with respect to dependent claims 8 and 16. Claim 8 and 16 further recite “wherein said authorization message is provided to said authorizing user on a device where said authorizing user is present.” However, the limitation of claims 8 and 16 is similar to the feature that was already considered in context of independent claims 1, 12, and 20, i.e., “transmitting an authorization message to said identified device where said authorizing user is present, wherein said authorizing user is remote from a location of said end-user.” App. Br. 10 (Claims Appendix). As a result, the Examiner considered Appellants’ argument for patentability of claims 8 and 16 as the same as “the argument to claims 1, 12, and 14 [sic, 20],” and, as such, “the response to [that] argument is same as the response to claims 1, 12, and 14 [sic, 20].” Ans. 16. We agreed with the Examiner. Decision 7- 11. Nevertheless, in the interest of completeness, we address Appellants’ arguments raised in the Rehearing Request as follows: App App simi inter a dev auth prese 7:13 pro to re eal 2012-0 lication 11 As previ lar method alia: “ide ice where orizing me nt” for ap -16, 28-32 FIG. 1 o FIG. vided with grant or d As show spond to a 03202 /863,892 ously expl for restric ntifying a said autho ssage to sa proval to a ; 8:19-28; f Bergstran 1 of Bergs a parenta eny an acc n in FIG. n access re ained in o ting acces n authorizi rizing use id identifi ccess the 9:2-5,10-1 d is repro trand show l control s ess reques 1 of Bergs quest to c 4 ur Decisio s of an end ng user as r is presen ed device content. D 5; FIG. 1 duced belo s a media ystem to c t from an trand, a pa ertain restr n, Bergstr -user to c sociated w t” and “tra where said ecision 7 ( and FIG. 2 w. content de ontrol an e end-user a rental con icted cont and disclo ontent inc ith [an] en nsmitting authorizi citing Ber ). livering a nd-user ac ccess to co troller 48 ent from a ses a luding: d-user and an ng user is gstrand, pparatus cess, i.e., ntent. is provided n end-user Appeal 2012-003202 Application 11/863,892 5 (e.g., child), via a receiver decoder, i.e., set-top box 40, and then forward the request (i.e., Appellants’ claimed “authorization message”) to an authorizing user (e.g., parent) by way of a phone call or an SMS message, via the authorizing user’s mobile phone, at a remote location, for approval. See Bergstrand, 3:5-8, 15-16; 7:11-31; 10:19-29; 11:3-4, 14-16; and Claim 1. Once such a request (i.e., Appellants’ claimed “authorization message”) is received and approved by the authorizing user (e.g., parent), that “authorization message is provided to said authorizing user on a device where the authorizing user is present,” as further recited in dependent claims 6 and 20. This way a parent can control access to restricted content from a remote location. Id. (emphasis added). CONCLUSION We have considered the arguments raised by Appellants in the Request, but find none of these arguments persuasive that our original Decision overlooked any points raised by Appellants resulting in error. It is our view that Appellants have not identified any points that the Board has overlooked. We have reconsidered our Decision but decline to grant the relief requested. This Decision on Appellants’ “Request for Rehearing” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1). DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision, and modified the Decision to further clarify our Appeal 2012-003202 Application 11/863,892 6 rationale for affirming the Examiner’s rejections. However, we deny the request with respect to making any changes to the outcome of the Decision. We thus reiterate that the Examiner’s decision rejecting: (1) claim 20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter; (2) claims 1-3, 5-8, 10-16, and 18-20 under 35 U.S.C. § 102(b) as being anticipated by Bergstrand; and (3) claims 4, 9, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Bergstrand and Hamid, remains AFFIRMED. Requests for extensions of time are governed by 37 C.F.R. § 41.52(b). REHEARING GRANTED-IN-PART tc