Ex Parte Newman et al

Patent Trial and Appeal BoardMay 30, 2017

13285751 (P.T.A.B. May. 30, 2017)

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. 13/285,751 10/31/2011 John-Rhys Newman 042933/411977 1048 10949 7590 06/01/2017 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER KELLS, ASHER ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN-RHYS NEWMAN, PASCAL WEVER, MARCO PAGLIA, DUNCAN BURNS, JULIAN BLEECKER, and JACOB ZUKERMAN Appeal 2016-003315 Application 13/285,751 Technology Center 2100 Before DEBRA K. STEPHENS, KEVIN C. TROCK, and MICHAEL M. BARRY, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the February 1, 2017 Decision on Appeal (“Decision”), wherein we affirmed the rejection of claims 1, 2, 4—7, and 9—22 under 35 U.S.C § 103(a) as being unpatentable over a combination of several references. We have reviewed the Decision in light of Appellants’ arguments, but for the reasons given below, we decline to change the Decision. Appellants contend that the Board misapprehended certain arguments set out in the Reply Brief. Req. Reh’g. 1—2. The Board found that Appellants had waived these arguments because they were new and were not initially presented in Appellants’ opening brief or were not raised in response to a new argument presented by the Examiner in the Answer. Appeal 2016-003 315 Application 13/285,751 Decision 6—7. Appellants assert that these arguments were “presented to clarify arguments presented in the Appeal Brief,” and that these arguments were “provided in response” to the Examiner’s interpretation or comments in the Answer. Req. Reh’g. 1—2. Appellants assert that an argument set out in the Reply Brief, namely, that “the Examiner used hindsight to find that Beeman teaches an interaction with a device to be available for a limited time period” (internal quotation marks, citation, and emphasis omitted), was presented “to clarify arguments presented in the Appeal Brief on pages 10-11,” and that this clarification was “provided in response to the interpretation in the Examiner’s Answer on page 6, paragraph 2, that the time-limited availability to interact with the device and display abbreviated second mode output for an event was disclosed in Beeman.” Req. Reh’g. 1—2. The “interpretation” Appellants point to on page 6, paragraph 2 of the Examiner’s Answer is merely a restatement of the Examiner’s Final Office Action. Compare Ans. 2—15 with Final Act. 2—15. Thus, Appellants could have made the argument regarding the Examiner’s alleged use of “hindsight to find that Beeman teaches an interaction with a device to be available for a limited time period” (emphasis omitted) in the Appeal Brief, but did not. Next, Appellants assert that the argument set out in the Reply Brief that “Makela requires a user input to change modes to view content relating to a missed call or message” (internal quotation marks, citation, and emphasis omitted) was presented “to clarify arguments presented in the Appeal Brief on pages 10-11,” and that this clarification was “provided in response to the Examiner’s comments in the Examiner's Answer on page 16, paragraph 3 — page 17, paragraphs 1-3 (Sections A and B).” Req. Reh’g. 2. 2 Appeal 2016-003 315 Application 13/285,751 The Examiner’s comments, however, are not a new finding or reasoning presented for the first time in the Answer. Indeed, the Examiner made a finding in the Final Office Action that Makela teaches an indication of an event is displayed in the restricted mode and that the event may be receipt of a message. See Final Act. 5. The Examiner further identified paragraph 42 of Makela as teaching “[i]f a user wishes to view more information about the missed calls and received messages then the user can enter the third mode 25 of the device 1 by tapping the device 1.” See Final Act. 5 (citing Makela 142)). Appellants, therefore, could have argued in the Appeal Brief that Makela required user input to change modes to view content relating to receipt of such a message, but did not. See Ex Parte Borden, 93 U.S.P.Q.2d 1473 (BPAI 2010) (“The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.) Appellants have not explained why, nor is it apparent that these arguments were necessitated by a new point in the Answer. In particular, Appellants had an opportunity to raise the arguments in the Appeal Brief, and have provided no showing of good cause for not doing so. In the absence of a showing of good cause by Appellants, the new arguments by Appellants are thus deemed waived. See 37 C.F.R. § 41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir 2006) (“[A]n issue not raised by an appellant in its opening brief... is waived.”) (Internal citations and quotation marks omitted). Accordingly, we have reviewed the Decision in light of Appellants’ 3 Appeal 2016-003 315 Application 13/285,751 arguments, but we decline Appellants’ request to change the Decision. DECISION The request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). DENIED 4