Ex Parte RE39038 et al

Patent Trial and Appeal BoardApr 11, 2014

90012220 (P.T.A.B. Apr. 11, 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 04/11/2014 HOYT A. FLEMING III P.O. BOX 140678 BOISE, ID 83714 EXAMINER KE, PENG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/11/2014 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 E1 Technology Center 3900 ____________________ Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL 1 Issued March 28, 2006 to Fleming (hereinafter “’038 patent”). Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 2 The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to adopt Requester’s rejection of claims 1-6, 8, 18, 25, and 26 in the subject reexamination. Claims 7, 23, 27, and 28 have been found to be patentable (Advisory Action mailed Jun. 11, 2013; Final Rej. 1- 5), and claims 45-48 have been cancelled (App. Br. 34-37).2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM the rejections and denominate our affirmance as New Grounds of Rejection under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request for ex parte reexamination filed March 30, 2012, by Thomas W. Humphrey, Esq. Representative independent claims 1 and 18 read as follows: 1. A method, executed by a device having a position, of generating an alert to an incoming radar signal having a frequency and a signal strength, the method comprising the acts of: (a) detecting the incoming radar signal; (b) determining the position of the device that detected the incoming radar signal; and (c) generating an alert if the position of the device is not within a predetermined distance of a predetermined position. 18. A radar detector for alerting an operator of a motor vehicle to an incoming police radar signal comprising: (a) a microprocessor; 2 We refer to Appellant’s Appeal Brief (“App. Br.”) filed August 10, 2013, Reply Brief (“Reply Br.”) filed November 2, 2013, the Final Rejection (“Final Rej.”) mailed March 14, 2013, and the Examiner’s Answer (“Ans.”) mailed September 9, 2013. Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 3 (b) a circuit coupled to the microprocessor for detecting the incoming police radar signal; and (c) a global positioning system receiver coupled to the microprocessor and operable to provide the microprocessor with data that indicates the position of the radar detector. The Examiner rejected claims 1-6, 8, 18, 25, and 26 under 35 U.S.C. § 102(b) as being anticipated by Hoffberg (US 6,252,544 B1, Jun. 26, 2001). Final Rej. 3; Ans. 3-6. ISSUES The dispositive issues on appeal are whether the Examiner erred in finding that Hoffberg discloses: 1. element (c) of claim 1, i.e., “generating an alert if the position of the device is not within a predetermined distance of a predetermined position”; and 2. element (c) of claim 18, i.e., “a global positioning system receiver coupled to the microprocessor and operable to provide the microprocessor with data that indicates the position of the radar detector.” ANALYSIS Anticipation of Claims 1-6, 8, 18, 25, and 26 Independent claim 1 recites a conditional limitation in connection with step (c) requiring “generating an alert if the position of the device is not within a predetermined distance of a predetermined position.” We note conditional steps employed in a method claim need not be found in the prior Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 4 art if, under the broadest scenario, the method need not invoke the steps. See Ex parte Katz, 2011 WL 514314, *4 (BPAI 2011) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). See also MPEP § 2111.04 (claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed). 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. Accordingly, Appellant’s argument contending Hoffberg fails to disclose element (c) is not commensurate in scope with claim 1 and thereby not persuasive of Examiner error. Therefore, we affirm the rejection of claim 1 under 35 U.S.C. § 102 as anticipated by Hoffberg. Regarding independent claim 18, Patent Owner contends that Hoffberg fails to disclose the GPS receiver and the detector circuit to be discrete entities that are coupled to the microprocessor. App. Br. 25; Reply Br. 4. Patent Owner’s arguments are not commensurate in scope with the broad claim language of claim 18, i.e., the claim language does not recite “discrete entities.” Claims 2-6, 8, 25, and 26 depend from claim 1. Patent Owner does not make any additional arguments with respect to claims 2-6, 8, 25, and 26. Thus, for this reason and the reasons discussed supra we agree with the Examiner’s decision to adopt Requester’s proposed rejection of claims 2-6, 8, 25, and 26. Appeal 2014-002849 Reexamination Control 90/012,220 Patent US RE39,038 E 5 CONCLUSIONS For the reasons stated above, we find Patent Owner has not shown the Examiner erred in rejecting claims 1-6, 8, 18, 25, and 26 under 35 U.S.C. § 102. Although we agree that Hoffberg anticipates representative claim 1, our reasoning differs from that of the Examiner. We therefore designate our decision as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), to provide Patent Owner a full and fair opportunity to address this new rationale. 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 6 AFFIRMED 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