Ex Parte Huber et al

Patent Trial and Appeal BoardAug 23, 2016

11618424 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111618,424 12/29/2006 23460 7590 08/25/2016 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Chester A. Huber 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 256041 5793 EXAMINER NGUYEN, CHUONG P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 08/25/2016 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHESTER A. HUBER, NEBOJSA NEDELJKOVIC, RICHARD A. JOHNSON, and LAURENCE J. TRETY AK Appeal2014-001083 Application 11/618,424 Technology Center 3600 Before JILL D. HILL, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Chester A. Huber et al. (Appellants) filed a Request for Rehearing on August 1, 2016 (hereinafter "Request"), seeking reconsideration of our Decision mailed May 31, 2016 (hereinafter "Decision"), in which we affirmed the Examiner's decision to reject claims 1 and 4-10. We have jurisdiction over the Request under 35 U.S.C. Â§ 6(b). We do not modify our decision. ANALYSIS A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 3 7 C.F.R. Â§ 41.52(a)(l); see also Ex parte Quist, 95 USPQ2d 1140, 1141 Appeal2014-001083 Application 11/618,424 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) Â§ 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by 37 C.F.R. Â§ 41.52(a)(2) though (a)(4). Id. In a request for rehearing, Appellants are required to "state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal] Board." See 37 C.F.R. Â§ 41.52(a)(l). However, the pending Request for Rehearing does not explicitly identify any such points. Instead, Appellants first rephrase a prior argument, contending that "Whitman, modified in view of Kim's teachings, would merely describe providing a current position of a pedestrian carrying a GPS enabled device-not a GPS equipped telematics unit for a vehicle." Request 5; compare id., with Appeal Br. 7-8, and Decision 4---6 (addressing this prior argument). However, as explained in our Decision, the Examiner relied upon Whitman because it "discloses ... a method of providing a packaged tour," while relying on Kim for disclosing "a portable terminal (i.e. reads on the telematics unit) which detects its current position from GPS and transmits its current position to a guidance of [a] sightseeing server," before concluding that "[n]onobviousness cannot be established by attacking references individually when the rejection is predicated upon a combination of prior art disclosures." See Decision 5---6. 2 Appeal2014-001083 Application 11/618,424 Appellants also contend that "[t]he Decision, at page 7, raises for the first time a challenge to support for Appellants' claimed vehicle-based telematics unit," which "is completely absent in Kim that unequivocally describes providing information associated with a pedestrian's current location." Request 5. However, Appellants misread page 7 of our Decision, where we merely pointed out that Appellants' Specification did not preclude "the Examiner from construing 'associated with a vehicle' to include the disclosure in Whitman [not Kim] of 'a portable electronic system which can be used in an automobile."' Appellants also rephrase another prior argument, contending that "the Decision does not provide a proper reason for modifying Whitman, in view of Kim, in a way that would result in Appellants' claimed 'starting point' calculated based on GPS data from the user's telematics unit." Request 6; compare id., with Reply Br. 4--5. In our Decision, we addressed this prior argument, pointing out that "we agree with the Examiner that 'one of ordinary skill in the art would find it obvious to combine Whitman and Kim et al for requesting and receiving a packaged tour based on the portable device current location wherein the portable device is associated with a vehicle.'" Decision 7 (citing Ans. 10-11 ). DECISION Appellants' Request for Rehearing has not persuaded us that our Decision misapprehended or overlooked any points of law or fact in sustaining the Examiner's rejection of claims 1 and 4--10. Insofar as we have addressed Appellants' arguments herein, Appellants' Request for Rehearing is granted. In all other respects, Appellants' 3 Appeal2014-001083 Application 11/618,424 Request for Rehearing is denied. This Decision on Appellants' Request for Rehearing is deemed to incorporate our earlier Decision (mailed May 31, 2016) by reference. See 37 C.F.R. Â§ 41.52(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). DENIED 4