Ex Parte Melkote et al

Patent Trial and Appeal BoardOct 31, 2016

13679419 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/679,419 11/16/2012 28395 7590 11/02/2016 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Anuradha Narasimhaswamy Melkote 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. ANAQ0102PUS1 1067 EXAMINER LE,CHAUD ART UNIT PAPER NUMBER 2493 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANURADHA NARASIMHASW AMY MELKOTE, DAMIAN PORCARI, and KELLY ANNE SLANK Appeal2015-002139 Application 13/679,419 Technology Center 2400 Before JEAN R. HOMERE, CARLA M. KRIVAK, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON REQUEST FOR RECONSIDERATION Appellants request a rehearing under 37 C.F.R. Â§ 41.52 of our Decision on Appeal entered June 29, 2016 ("Decision" or "Dec.") in which we affirmed the Examiner's final rejection of claims 1-5, 8-11, and 16-23. (Req. for Reh'g 2.) The Request for Rehearing is denied. Appeal2015-002139 Application 13/679,419 ANALYSIS Appellants argue that "the Examiner must explain why one of ordinary skill would have recognized that Takano would improve Lemble" and "the Board simply asserts without explanation that one would have recognized that Takano would improve Lemble." (Req. for Reh'g 2 (emphasis in original).) In particular, Appellants argue "[a]n assertion that one would have recognized that incorporating reference A, which includes some functionality, with reference B would improve reference B by providing it with some other functionality does not explain why one would have recognized that A would improve B." (Id. (emphasis in original).) However, page 3, lines 15-23, of our Decision states: Takano relates "to a system for preparing patent specifications." (Col. 1, 11. 8-9.) Takano explains that An object of the present invention is to provide a system capable of preparing data for patent application documents by the transmission and reception of draft data via a server computer between a client computer used by an inventor preparing the draft data for a specification . . . and another client computer used by patent-application- filing persons including a patent attorney revising the draft data. (Dec. 3 (emphases added).) Furthermore, page 3, line 25 to page 4, line 1, of our Decision states: A person of ordinary skill in the art would have recognized that incorporating the system of Takano, which includes a server computer for transmitting a patent specification between an inventor computer and a patent attorney computer, with the document system of Lemble would improve Lemble by 2 Appeal2015-002139 Application 13/679,419 providing it with the ability to efficiently transfer patent application documents. (Dec. 3--4 (emphasis added).) Accordingly, contrary to Appellants' argument that "the Board simply asserts without explanation that one would have recognized that Takano would improve Lemble" (Req. for Reh' g 2), our Decision does explain that Takano would improve Lemble by providing the ability to transfer patent application documents between a client computer used by the inventor and another client computer used by patent- application-filing persons via a server computer. Moreover, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited by KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The Examiner concludes it would have been obvious . . . to implement the invention of Lemble into an invention disclosure environment, by combining the electronic filing document approval system of Lemble with the features of filing an invention disclosure by inventors and patent attorneys as taught by Takano for the purpose of conveniently preparing a patent application via a transmission and reception of application data between the inventor and other patent application-filing users (Final Act. 5 (emphasis omitted).) Thus, the Examiner has provided the requisite articulated reasoning with some rational underpinning to support a conclusion of obviousness. Appellants have not provided any legal authority to support the requirement that "the Examiner must explain why one of ordinary skill would have recognized that Takano would improve Lemble." (Req. for Reh' g 2 (emphasis in original)), nor have Appellants provided reasoning or arguments as to how or why the Examiner's rational for combining the references is in error. 3 Appeal2015-002139 Application 13/679,419 CONCLUSION The Request for Rehearing has been considered and denied. 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). REHEARING DENIED 4