Ex Parte Profitt-Brown et al

Patent Trials and Appeals BoardMar 29, 2019

12985492 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/985,492 01/06/2011 28395 7590 06/25/2019 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Elizabeth Profitt-Brown 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. 83178519 4444 EXAMINER DO,TRUCM ART UNIT PAPER NUMBER 3669 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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 ELIZABETH PROFITT-BROWN, KELLY LEE ZECHEL, JOSEPH PAUL RORK, BRIAN PETERSEN, and EDWARD ANDREW PLEET Appeal 2018-007 491 Application 12/985,492 Technology Center 3600 Before BRETT C. MARTIN, LYNNE H. BROWNE, and JEFFREY A. STEPHENS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Elizabeth Profitt-Brown et al. (hereinafter "Appellants") filed a request for rehearing under 37 C.F.R. Â§ 41.52 (hereinafter "Request"), dated June 3, 2019, of our Decision on Appeal (hereinafter "Decision" or "Dec.") mailed April 2, 2019. In the Decision, we affirmed the Examiner's rejection of claims 9 and 10 under 35 U.S.C. Â§ 101. Appeal 2018-007 491 Application 12/985,492 DISCUSSION A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. Â§ 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) ( quoting Manual of Patent Examining Procedure ("MPEP") Â§ 1214.03). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision.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 paragraphs (a)(2) through (a)(4). See 37 C.F.R. Â§ 41.52. The proper course for Appellants dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. Â§Â§ 141, 145. Appellants assert "that the lack of 'practical application' analysis warrants rehearing to consider exactly this analysis, and for at least the reasons below, and ... that the practical application analysis reveals the patent eligibility of the claims." Request 2. According to Appellants, there is "no mention of this analysis in the Board's decision. Instead, the Board states that under the Revised Guidance, the Board should examine the additional material to determine whether it is 'more than what is well- understood, routine and conventional activity.' Concluding that the additional material is not, the Board sustains the 101 rejection." Id. at 3-4. Although, we agree with Appellants that under the Revised Guidance, we are directed to determine if the claim as a whole integrates the judicial exception into a practical application of that exception, we do not agree that the Decision is devoid of such analysis. Rather, considering the claim as a whole we state that "[t]he method of finding charging station locations is a 2 Appeal 2018-007 491 Application 12/985,492 process that constitutes mental steps but for the recitation of generic computer components. That is, other than reciting that the method is 'computer implemented' nothing in the claim precludes the step from practically being performed in the mind." Dec. 4. On page 5 of the Decision, we explained why two additional limitations beyond the identified mental process "do not integrate the claimed judicial exception into a practical application of that exception because they do not impose any meaningful limits on practicing the abstract idea." Dec. 5. Here, we considered the claim as a whole in determining whether the additional limitations integrate the exception into a practical application, and this analysis is consistent with the Revised Guidance quoted at page 3 of Appellants' Request. Appellants argue that "[t]he error here is clear in that the new prong two analysis expressly requires that the consideration of 'routine and conventional activity' is not the predicating factor, or even to be considered, in the 'practical application' analysis." Request 4. Contrary to Appellants' argument, however, the Decision only mentions well-understood, routine, conventional activity in reevaluating the post- and extra-solution activity as part of Step 2B of the Revised Guidance. See Dec. 5-6. Accordingly, Appellants' arguments are not persuasive of error in our decision affirming the rejection of claims 9 and 10 under 35 U.S.C. Â§ 101. 3 Appeal 2018-007 491 Application 12/985,492 DECISION AND ORDER We grant the Request to the extent that we have considered the arguments pertaining to matters allegedly overlooked or misapprehended, but otherwise deny the Request. DENIED 4