Ex Parte Sachs et al

Patent Trial and Appeal BoardMar 13, 2017

12514767 (P.T.A.B. Mar. 13, 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. 12/514,767 03/25/2010 Joachim Sachs P23050-US1 3624 27045 7590 08/30/2017 F.RTrSSON TNC EXAMINER 6300 LEGACY DRIVE CHOU, ALAN S M/SEVR 1-C-ll PLANO, TX 75024 ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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): michelle. sanderson @ eric sson .com pam. ewing @ ericsson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOACHIM SACHS, TEEMU RINTA-AHO, PER MAGNUSSON, and MIKAEL PRYTZ Appeal 2016-007904 Application 12/514,767 Technology Center 2400 Before ST. JOHN COURTENAY III, JOHN A. EVANS, and JOHN D. HAMANN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Introduction In a Request for Rehearing filed May 15, 2017 (“Request,” “Req.”), Appellants request rehearing of the Decision of the Patent Trial and Appeal Board (“Board”) mailed March 15, 2017 (“Decision”), in which we affirmed the final rejection of Claims 1—11 and 13—20 under 35 U.S.C. § 103(a) as obvious over Vanghi (US 2002/0155854 Al; pub. Oct. 24, 2002), Jackson (US 2007/0022425 Al; priority Apr. 7, 2005), and Lederer et al. (US 2010/0034149 Al; priority Aug. 23, 2006). The Request alleges that the Board misunderstood and misconstrued Appellants’ arguments. Req. 2. We disagree. Appeal 2016-007904 Application 12/514,767 ANALYSIS New grounds of Rejection Appellants contend the Examiner’s Answer relied upon “alternative findings” which, as such, comprised an “undesignated new grounds of rejection.” Req. 2. Appellants acknowledge they provided no reply to the alleged “new ground” and argue Appellants were “under no duty to address the new grounds.” Id. An Examiner may make a new ground of rejection on appeal. 37 C.F.R. § 41.39(a)(2) (2010). The new ground should be designated as such, which designation triggers procedural options for the Appellants. Id. at § 41.39(b). If an Examiner has procedurally erred (i.e., not properly designating a new ground of rejection), the remedy lies exclusively in petitioning the Director for supervisory review. 37 C.F.R. § 1.181; cf. 35 U.S.C. § 6(b) (giving substantive review powers directly to the board). The Director of the United States Patent and Trademark Office, not the board, supervises examination and Examiners. 35 U.S.C. §§ 3(a)(2)(A), 132(a). Rather than petitioning the Director, Appellants’ Reply Brief appears to have chosen the option of simply maintaining the appeal {id. at § 41.39(b)(2)), which is an option that can be adopted in response to a new ground of rejection. Appellants acknowledge their Reply Brief does not respond to, or otherwise contest, the Examiner’s “alternative findings.” Req. 2. Failure to respond constitutes waiver of the asserted ground of rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that “[wjhen the appellant fails to contest a ground of rejection to the Board,... the Board may treat any argument with respect to that ground of rejection as waived”); 2 Appeal 2016-007904 Application 12/514,767 see also Manual of Patent Examining Procedure (“MPEP”) § 1205.02 (9th ed., Rev. 07.2015, Nov. 2015) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.”). Cited References Appellants contend the Board’s Decision relied on Appellants’ (Appeal) Brief, the Examiner’s Answer, and the Final Action. Req. 2 (citing Decision 1 n.2). Appellants appear to imply the Decision failed to consider the cited references. Id. (“Appellants respectfully submit that the cited references relied on are additionally part of the record to be considered”). We found “Appellants fail to traverse the Examiner’s initial findings (i.e., Appellants do not evaluate the passages cited by the Examiner, but rather argue that passages not cited do not contain the required disclosure).” Decision 5. Appellants’ Request admits that, as found by our Decision, Appellants did not traverse the Examiner’s explicit findings. Appellants’ Request “clarif[ies Appellants’] response to more clearly address the content of the cited teachings, which were not explicitly recited in the Appeal Brief (as the text of the references is readily available as part of the record).'1'’ Req. 2 (emphasis added). The Board’s role is to “on written appeal of an applicant, review adverse decisions of examiners upon applications for patents.” In re Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing 35 U.S.C. § 6(b) (2006)). Appellants may attempt to overcome an Examiner’s obviousness rejection on appeal to the Board by submitting arguments and/or evidence to show that the Examiner made an error in either (1) an underlying finding of 3 Appeal 2016-007904 Application 12/514,767 fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the Appellants may submit evidence of secondary considerations of non obviousness. See In re Kahn, 441 F.3d 977, 985—86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence ofprima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (Quoting In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Appellants’ Request invites the Board to independently review the cited art. Req. 7 (“Appellants respectfully request that the Board consider the content of the references and their cited teachings in response to this Request for Rehearing”). We decline such invitation. Filing a Board appeal does not, unto itself, entitle Appellants to de novo review of all aspects of a rejection. As Frye explains, if Appellants fail to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. See Frye, 94 USPQ2d at 1075 (citing Hyatt, 551 F.3d at 1313—14 (the Board may treat arguments Appellants failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the Appellants’ new argument regarding the scope of a prior art patent when that argument was not raised before the Board); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non- analogous art when that argument was not raised before the Board). Thus, the Board will generally not reach the merits of any issues not contested by Appellants. Cf In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 4 Appeal 2016-007904 Application 12/514,767 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant. . . Determining a number of user networks. Appellants now wish “to more clearly address the content of the cited teachings, which were not explicitly recited in the Appeal Brief.” Req. 2. With respect to the Vanghi reference, Appellants now assert the “Examiner’s findings are plainly not supported by the cited portions of the reference.” Id. at 3. Appellants wish to make explicit that which was admittedly only implied in their Brief. Id. at 2. Appellants have waived such arguments. “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Threshold number. Similarly, Appellants argue Vanghi fails to teach the claimed “threshold number.” Req. 6 (“Appellants, in an attempt to find meaning in Examiner’s remarks which are not clearly explained as to how the teachings map to the claim elements, looked to other portions of Vanghi”). As discussed above, Appellants have waived this argument. Once again, Appellants assert they were under no duty to address what they allege are “undesignated new grounds of rejection.” Id. As discussed above, we reject this assertion. Rationale to combine Lederer and Vanghi. Appellants do not traverse the rationale which the Examiner finds a person of ordinary skill in the art would have to combine the teachings of Lederer and Vanghi. Rather, Appellants contend the Examiner’s rationale 5 Appeal 2016-007904 Application 12/514,767 for combining the references, “regardless of the motivation, fails to further provide support for teaching any of the claim elements.” Id. at 7. As set forth in our Decision, and as discussed above, Appellants fail to persuade us that the combination of Lederer and Vanghi fail to teach any claimed limitation. Similarly, we are not persuaded the motivation, as found by the Examiner, is deficient. We have only considered those timely arguments actually made by Appellants in deciding this Request. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.”). We reproduce the exceptions to our rehearing rule below: (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board’s decision contains an undesignated new ground of rejection are permitted. 37 C.F.R. §41.52(a)(2-4). We find the exceptions permitted under 37 C.F.R. § 41.52(a)(2—4) are inapplicable here, because: (1) Appellants have not presented new arguments in the Request based upon intervening Federal Circuit or Supreme Court case law, (2) our Decision did not contain a new ground of rejection designated pursuant to 37 C.F.R. § 41.50(b), and (3) Appellants allege in the Request (2, 6) that the Examiner’s Answer contains an 6 Appeal 2016-007904 Application 12/514,767 undesignated new ground of rejection. Appellants have not alleged in the Request that our Decision contains an undesignated new ground of rejection. Therefore, we find Appellants’ arguments in the Request are untimely under our rehearing procedural rule. See 37 C.F.R. § 41,52(a)( 1 4). DECISION Based on the record before us now, and in the original appeal, we are still of the view that the rejection of claims 1—11 and 13—20 should be sustained. We have granted the Request to the extent that we have reconsidered our decision of March 15, 2017, but we deny the request with respect to making any changes therein. See 37 C.F.R. § 41.52(b): No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED 7