Ex Parte RE39038 et al

Patent Trial and Appeal BoardDec 12, 2014

90012220 (P.T.A.B. Dec. 12, 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. 90/012,220 03/30/2012 RE39038 FLEMREEX-038 5282 28422 7590 12/12/2014 HOYT A. FLEMING III P.O. BOX 140678 BOISE, ID 83714 EXAMINER KE, PENG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/12/2014 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 HOYT A. FLEMING, III Appellant, Patent Owner ____________ Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E Technology Center 3900 ____________ Before KEN B. BARRETT, MICHAEL W. KIM, STANLEY M. WEINBERG, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. 1 KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING BACKGROUND In our Decision on Appeal dated April 11, 2014 (“Decision”), we affirmed the Examiner’s rejection of claims 1–6, 8, 18, 25, and 26 of the ’038 patent under 35 U.S.C. § 102 based on different reasoning from that of the Examiner and denominated our affirmance as New Grounds of Rejection under 37 C.F.R. § 41.50(b). Decision 5. 1 Administrative Patent Judge Joseph F. Ruggiero was on the original panel that decided this case, but has retired. Judges Weinberg, Barrett, and Kim have been added to the merits panel. Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 2 Patent Owner requests rehearing of our Decision under 37 C.F.R. § 41.52. Request for Rehearing (“Req. Reh’g”) dated June 8, 2014. The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 41.52(a)(1) (2012), which provides in relevant part, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” We reconsider our Decision in light of Patent Owner’s Request for Rehearing and we grant rehearing in part. ANALYSIS First Issue: Patent Owner contends the basis for the affirmance of the Examiner’s rejection of claims 1–6, 8, 25, and 26 “was the (legally erroneous) premise that the conditional step was not entitled to patentable weight” (Req. Reh’g 6), and specifically contends: Element (c) of claim 1 requires “generating an alert if the position of the device is not within a predetermined distance of a predetermined position”. Thus, element (c) is a conditional step recitation. In affirming the rejection, the Board stated: “conditional steps employed in a method claim need not be found in the prior art if, under the broadest scenario, the method need not invoke the steps . . . . Therefore, because the performance of step (c) is conditional on an event that may not occur, step (c) is optional and is not entitled to patentable weight.” (Decision, pp. 3-4 (internal citations omitted.) Thus, the Board construed the condition step element to be an optional step entitled to no patentable weight. To the contrary, the Federal Circuit’s decision in Altiris, Inc. v. Symantec Corp held that a conditional step “must be Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 3 performed” in order to meet the claim. 318 F.3d 1363, 1370-72 (Fed. Cir. 2003). In Altiris, the method claims recited that “if said testing step indicates a normal boot sequence” then the computer boots normally. The Court found that the conditional step recitation must be given patentable weight. Id. Req. Reh’g 3. As an initial matter, we note that we did not and do not hold that every conditional step recitation in a method claim2 is not entitled to patentable weight. We simply construe the claim at issue in this case by giving it the broadest reasonable construction consistent with the specification. Patent Owner relies upon Altiris and contends “[t]he Court found that the conditional step recitation must be given patentable weight.” Id. We disagree with the Patent Owner’s suggestion that the Court held that all conditional claims must be given patentable weight, because Altiris was not concerned with whether the conditional step must be given patentable weight. Instead, the issue in Altiris was whether the District Court properly construed the claim. Altiris, 318 F.3d at 1365–66 (“the trial court erred in the construction of each of the five claim limitations”). More specifically, in Altiris, the issue was whether certain steps must occur in a specific order. See id. at 1369–70 (“The district court held that, even though the claims did not recite a specific order, the ‘setting’ step must occur after the ‘testing automatically’ step and before the “booting normally’ step. . . . First, we 2 We also do not reach the issue as to whether the outcome would be different had the claim at issue been to a system or apparatus capable of generating an alert in a manner similar to that of step (c) here. See, e.g. Ex Parte Katz, 2010-006083, 2011 WL 514314, at *6 (BPAI 2011). Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 4 look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written. . . . If not, we next look to the rest of the specification to determine whether it ‘directly or implicitly requires such a narrow construction.’” (citations omitted)). Against this issue, case law discussion, and claim analysis, the Court in Altiris concluded “[t]he only order mandated by the claim language is the conditional language in several of the steps, indicating that they must be performed after the ‘testing’ step.” Id. at 1370. As discussed in our original Decision, conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable construction, the method need not invoke the steps. Decision 3– 4; see Katz, 2011 WL 514314, at *4 (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). In this case, step (c) does not require, as Patent Owner urges, “a threshold distance algorithm that a [sic] compares two specific distances.” Reply Br. 3. There is no comparison step or calculation step or recitation of an algorithm. Patent Owner’s arguments therefore are not commensurate in scope with the broader claim language. Patent Owner also contends that element (c) requires generating an alert “if” the position of the device is not at the recited location. Req. Reh’g 5. Patent Owner does not contend that element (c) requires generating an alert under all circumstances; for example, if the position of the device is at the recited location. Under the broadest reasonable interpretation of the claim, when the “detecting” and “determining” actions of steps (a) and (b) are performed and the position of the device is within a predetermined distance of a predetermined position (i.e., the condition is not present), the method Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 5 concludes and the prior art need not disclose “generating an alert” to render the claim unpatentable. Referring to the diagrams on page 8 of Patent Owner’s Brief, the claimed method is satisfied when steps (a) and (b) are performed and the automobile is less than ½ mile (the predetermined distance of the example) from the Food Mart (the predetermined position of the example) because the condition precedent for the performance of step (c) is not present. In light of the above, we decline to change the result of our Decision with regard to the anticipation rejection of claims 1–6, 8, 25, and 26. Second Issue: Patent Owner contends, “In light of the controlling Federal Circuit precedent, claim 18 must be interpreted to require a separate and distinct microprocessor, detector circuit, and GPS receiver.” Req. Reh’g 8. In particular, Patent Owner contends: The Federal Circuit and the Board have consistently held that a single item cannot meet two separately claimed elements, especially when the claim specifically recites a particular relationship between the two elements. In 2010, the Federal Circuit clarified the construction of separate claim elements. Specifically, the Federal Circuit held: Claim 1 lists four separate elements: 1) a needle, 2) a guard that rides on the needle, 3) a hinged arm attached to the guard, and 4) a spring means ‘connected to’ the hinged arm. Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention. Req. Reh’g 7 (quoting Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)). Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 6 We note the Request for Rehearing is raising arguments that were not raised previously in either the Appeal Brief or the Reply Brief. As the Board has found, “[t]he failure to raise all issues and arguments diligently, in a timely fashion, has consequences,” and thus, such newly-raised arguments are technically waived. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision); see also id. at 1474 (“[T]he reply brief [is not] 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.”). Cf. Kaufman Company v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986) and McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986). Further, § 41.52(a)(1) states, “The request for rehearing must state with particularity the points believed to have been misapprehended or overlook by the Board. Arguments not raised, and [e]vidence not previously relied upon . . . are not permitted in the request for rehearing except” for certain situations that do not apply here. We note that, although Patent Owner added additional arguments in the Reply Brief regarding claim 18 in an attempt to cure the noted deficiencies in the Appeal Brief, because Patent Owners’ arguments could have been raised in the Appeal Brief but Patent Owner failed to do so, we deemed the arguments technically waived. To the extent that Patent Owner presents supplemental or new arguments in the Request for Rehearing, not in response to the new ground of rejection designated in the Decision, such arguments at this stage of the prosecution are inappropriate and will not be considered. Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 7 In view of the above, we decline to make any changes in our Decision with regard to the anticipation rejection of claim 18. CONCLUSIONS In view of the foregoing discussion, we decline to make any changes in the Decision mailed April 11, 2014 regarding the rejection of claim 18. Accordingly, the Request for Rehearing is denied as to claim 18. To the extent that our reasoning herein regarding claim 1 differs from that in our Decision, we designate this Decision on Request for Rehearing as containing a new ground of rejection of claim 1 in order to be completely fair to Patent Owner and to permit Patent Owner to address the reasoning. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Patent Owner, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 8 REHEARING GRANTED-IN-PART 37 C.F.R. § 41.50(b) msc For Patent Owner: HOYT A. FLEMING III P.O. BOX 140678 BOISE, ID 83714 For Third Party Requester: THOMAS W. HUMPHREY, ESQ. WOOD HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OHIO 45202-2917